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Obviousness Analysis Does Not Consider Unclaimed Limitations

JANSSEN PHARMACEUTICALS, INC. v. TEVA PHARMACEUTICALS USA, INC. Before Prost, Dyk, and Hughes.  Appeal from the United States District Court for the District of New Jersey. Summary: District court erred by adding...more

USPTO Says Wands Still Controls Enablement Analysis Post-Amgen

On January 9, 2024, the USPTO published guidelines for its patent examiners when evaluating compliance with the enablement requirement in light of the U.S. Supreme Court’s recent decision in Amgen Inc. et al. v. Sanofi et...more

Prosecution History May Support a Motivation to Combine

Elekta Limited v. Zap Surgical Systems, Inc. Before: Reyna, Stoll, and Stark. Appeal from the Patent Trial and Appeal Board. Summary: Patentee’s failure during prosecution to distinguish relevant art provided support...more

Raise It or Lose It! The Federal Circuit Will Not Address Obviousness Arguments First Raised by the PTO on Appeal

In Re Google LLC - Before: Moore, Lourie, and Prost. Appeal from the Patent Trial and Appeal Board. Summary: The PTO’s arguments on appeal did not reflect the record below....more

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