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Process Step Order Cannot Save Claim with Conventional Manufacturing Steps From Obviousness

On October 26, 2017, the Federal Circuit, in a split decision, upheld the invalidity of the asserted claims of U.S. Patent No. 6,486,150 (“the ’150 patent”) as obvious under 35 U.S.C. § 103. See Merck Sharp & Dohme Corp. v....more

Federal Circuit Sends Verinata Patent Back to PTAB – The Import of Background Prior Art In Supplying The Requisite Motivation To...

On November 16, 2015, the Federal Circuit vacated and remanded a Patent Trial and Appeal Board (PTAB, also the “Board”) inter partes review (“IPR”) decision holding that a prior art reference, though not identified as an...more

Federal Circuit Affirms Invalidity of Method Species Claims Over Prior Art Genus

On November 10, 2015, the Federal Circuit issued its opinion in Prometheus Laboratories, Inc. v. Roxane Laboratories, Inc. et al., No. 14-1634, -1635, slip op. (Fed. Cir. Nov. 10, 2015) affirming the district court’s decision...more

Federal Circuit Provides Plain Language Test for Analogous Art

Whether or not a prior art reference constitutes “analogous art” for purposes of an obviousness inquiry under 35 U.S.C. § 103 has been the subject of debate in many instances. On July 28, 2015, the Federal Circuit, in Circuit...more

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