Expert Testimony, Obviousness, Patent Validity

Discretionary Denials at the PTAB: Strategic Insights for Petitioners and Patent Owners in a Shifting Landscape

Baker Botts L.L.P. on 7/8/2025

A set of recently issued memoranda by United States Patent and Trademark Office (“USPTO”) officials has re-energized the debate around discretionary denials in post-grant trials at the Patent Trial and Appeal Board (“PTAB”)....more

Breaking Up Is Hard to Do: Validity Upheld Based on Expert Separation Testimony

McDermott Will & Schulte on 4/27/2023

The US Court of Appeals for the Federal Circuit affirmed a district court decision finding that two patents covering enantiomerically pure compositions of the psoriasis drug Otezla® (apremilast) were valid and one patent...more

FanDuel Learns the Hard Way: An IPR Challenge to Any Patent Claim May be Lost if Not Comprehensive and Rigorous Enough

Sunstein LLP on 9/1/2020

As we demonstrated in our own successful appeal, Arendi S.A.R.L. v. Apple Inc. (Fed. Cir. 2016), a petition for inter partes review (“IPR”) may fail when an expert declaration lacks detailed explanation. An expert’s...more

Filling the Hole with Common Sense: When Evidentiary Support is Adequate

Mintz - Intellectual Property Viewpoints on 7/7/2020

The Federal Circuit recently reaffirmed a case where common sense was used to supply a missing element in a § 103 obviousness analysis. On June 26, 2020, the Federal Circuit issued a decision in B/E Aerospace, Inc. v. C&D...more

Only an Expert Can Offer Opinions on Obviousness

Akin Gump Strauss Hauer & Feld LLP on 3/2/2020

In a precedential decision in HVLPO2, LLC v. Oxygen Frog, LLC, the Federal Circuit held that non-expert testimony on obviousness is inadmissible, further finding that the district court abused its discretion by allowing a lay...more

Federal Circuit Appeals from the PTAB: Summaries of Key 2017 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/19/2018

In 2016, the US Court of Appeals for the Federal Circuit docketed more appeals from the US Patent and Trademark Office (PTO) than any other venue—a first in its over 30-year history. The post grant proceedings created by the...more