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Obvious to Try Requires Reasonable Expectation of Success Tethered to Claimed Invention

Addressing obviousness in the context of method of treatment claims using particular drug dosages, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) final written decision holding...more

“Non-Limiting” Prior Art Claims Support Obviousness After Standing Is Established

Addressing the issue of Article III standing and obviousness in an appeal of an inter partes review (IPR) decision, the US Court of Appeals for the Federal Circuit found that the petitioner had standing to appeal because past...more

Prima Facie Obviousness Established Where Claimed pH Range Overlaps with Prior Art Range for Similar Compounds

The US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment that found a patent was not obvious because the claimed pH range would not have been obvious-to-try despite overlapping ranges...more

Retroactive Application of IPRs to Pre-AIA Patents is not Unconstitutional Taking

The US Court of Appeals for the Federal Circuit addressed for the first time whether the retroactive application of inter partes review (IPR) proceedings to pre-America Invents Act (AIA) patents is an unconstitutional taking...more

Obviousness Reversed for Clear Error in Factual Findings on Combination of References

The US Court of Appeals for the Federal Circuit reversed a district court’s judgment that the challenged claims were invalid for obviousness. The Court also vacated judgments in separate actions that had been entered based on...more

Factual Findings Required to Show “Apparent Reason to Combine”

Addressing issues of obviousness and anticipation in the context of an inter partes review, the US Court of Appeals for the Federal Circuit issued two decisions with respect to the same patent, vacating and remanding the...more

ANDA Update - March 2017 Volume 3, Number 1

Speculative Evidence of Irreparable Harm Sinks Bayer's Request for Permanent Injunction - Bayer Pharma AG, et al. v. Watson Laboratories, Inc. (D. Del. December 28, 2016) - Applying the eBay factors to Plaintiff...more

“Substantial Evidence” Review Dooms PTAB Appeal - Merck & Cie v. Gnosis S.P.A.

Addressing the issue of obviousness in the context of an inter partes review (IPR), the U.S. Court of Appeals for the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB or Board) under a...more

Proper Claim Construction Requires Context - Atlas IP, LLC v. Medtronic, Inc.

Addressing claim construction issues, the U.S. Court of Appeals for the Federal Circuit affirmed in part, reversed in part and remanded a district court’s summary judgment rulings finding that the district court did not...more

Declarations from Inventors of Prior Art Could Create Genuine Dispute over Motivation to Combine - Ivera Medical Corp. v. Hospira,...

Addressing the issue of obviousness, the U.S. Court of Appeals for the Federal Circuit held that the district court erred in granting summary judgment of invalidity because plaintiff patentee established a genuine issue of...more

IP Update, Vol. 16, No. 9, September 2013

Patents/Preliminary Injunction: Preliminary Injunction Ordered Based on Appellate Claim Construction Aria Diagnostics, Inc. v. Sequenom, Inc. - Addressing a preliminary injunction filed by a defendant in a...more

IP Update, Vol. 16, No. 5, May 2013

Patent Exhaustion Rejected: Patented Seed Purchaser Has No Right to Make Copies: Bowman v. Monsanto Co. - In a narrow ruling that reaffirms the scope of patent protection over seeds, and possibly over other...more

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