Category Archives: Analgous Art

Board IPR obviousness decision affirmed (analogous art, motivation to combine)

Posted on May 31, 2022 by Patrick J. Halloran, Ph.D., J.D.

Ethicon LLC and Cilag GmbH Int. (“Ethicon”) v. Intuitive Surgical, Inc. Docket No. 2021-1601 (IPR2019-00991) (https://cafc.uscourts.gov/opinions-orders/21-1601.OPINION.5-19-2022_1953841.pdf) (Non-precedential) NEWMAN (D), CLEVENGER, STOLL May 19, 2022 Brief Summary:   Board IPR finding of invalidity for obviousness affirmed. Summary:  Ethicon appealed USPTO Board … Continue reading →

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IPR decision vacated and remanded for failure to compare “purposes or problems” of patent and alleged analogous art

Posted on November 13, 2020 by Patrick J. Halloran, Ph.D., J.D.

Donner Technology, LLC v. Pro Stage Gear, LLC Docket No. 2020-1104 (IPR2018-00708) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1104.OPINION.11-9-2020_1682293.pdf) PROST, DYK, HUGHES November 9, 2020 Brief Summary:  Board IPR decision vacated and remanded as it “failed to properly identify and compare the purposes or problems” of … Continue reading →

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USPTO’s “Informative” denial of IPR institution finds Petitioner did not “explain[] sufficiently why” combination would have been made with a reasonable expectation of success

Posted on December 19, 2019 by Patrick J. Halloran, Ph.D., J.D.

Johns Manville Corp. et al. (Petitioner) v. Knauf Insulation et al. (Patent Owner) IPR2018-00827 (US 9,828,287 B2) Final Written Decision entered October 16, 2018 Designated as Informative by the USPTO on December 11, 2019 Brief Summary: Informative FWD concluded Petitioner … Continue reading →

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Board reexamination decision vacated and remanded for reconsideration of its analogous art analysis (“reasonably pertinent”)

Posted on November 11, 2019 by Patrick J. Halloran, Ph.D., J.D.

Airbus S.A.S. v. Firepass Corporation Docket Nos. 2019-1803 LOURIE, MOORE, STOLL November 8, 2019 Brief Summary: Board reexamination decision vacated and remanded for reconsideration of its analogous art determination (i.e., “whether the reference…is reasonably pertinent”). Summary: Airbus appealed Board reversal … Continue reading →

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In re: Timothy D. Durance, et al.

Posted on June 7, 2018 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2017-1486 LOURIE, REYNA, CHEN June 1, 2018 Brief summary: PTAB affirmance of examiner’s obviousness rejection vacated and remanded due to the examiner’s and PTAB’s “multiple shifting articulations” of the rejections. Summary: Mr. Durance et al. appealed PTAB decision … Continue reading →

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Smith & Nephew, Inc., Covidien LP v. Hologic, Inc.

Posted on January 31, 2018 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2017-1008 DYK, SCHALL, REYNA January 30, 2018 Non-precedential Brief summary: Board’s decision of one anticipation and two obviousness rejections affirmed; another obviousness rejection reversed and remanded as being based on non-analogous art. Summary: S&N appealed Board decision affirming … Continue reading →

Posted in Analgous Art, Anticipation (35 USC 102), Obviousness, Reexamination | Leave a comment

Bosch Automotive Service Solutions, LLC v. USPTO

Posted on December 27, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket Nos. 2015-1928 (IPR2014-00183) NEWMAN, CHEN, HUGHES December 22, 2017 Brief summary: PTAB IPR FWD affirmed as to finding of obviousness and anticipation but vacated as to dismissal of contingent motion to amend claims since the that the PTAB “impermissibly … Continue reading →

Posted in Analgous Art, Anticipation (35 USC 102), Inter Parties Review (IPR), IPR, Means-plus-function, Obviousness | Leave a comment

Genzyme Corporation, Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Laboratories / Teva Pharm. USA, Inc.

Posted on December 19, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket Nos. 2016-2206, -2207 MOORE, PLAGER, CHEN December 18, 2017 Non-precedential Brief summary: DC decision of nonobviousness found not to be clearly erroneous due to a lack of reasonable expectation of success in arguments (e.g., based on non-analogous art that … Continue reading →

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In Re: Ethicon, Inc.

Posted on March 16, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2015-1696 NEWMAN (D), LOURIE, DYK January 3, 2017 Brief Summary: The FC panel concluded that the “teaching of all of the required components of the claims” by the cited art “support the Board’s combination” of the same “to … Continue reading →

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Coalition for Affordable Drugs X LLC (“CAD”) v. Anacor Pharmaceuticals, Inc.

Posted on February 28, 2017 by Patrick J. Halloran, Ph.D., J.D.

IPR2015-02776 (US 7,582,621B2) Final Written Decision February 23, 2017 Brief Summary: Board found CAD had shown invalidity for obviousness of the ‘621 claims by a preponderance of the evidence. Summary: CAD petitioned for IPR of Anacor’s US 7,582,621 B2 on … Continue reading →

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