Category Archives: Obviousness (Secondary Considerations)

IPR finding of no obviousness reversed as “generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine”

Auris Health, Inc. v. Intuitive Surgical Operations, Inc. Docket No. 2021-1732 (IPR2019-1533) (https://cafc.uscourts.gov/opinions-orders/21-1732.OPINION.4-29-2022_1943629.pdf) DYK, PROST, REYNA (D) April 29, 2022 Brief Summary:   IPR finding of no obviousness reversed and remanded as industry skepticism was too general and not specific … Continue reading

Posted in Inter Parties Review (IPR), IPR, Medical Devices, Obviousness, Obviousness (Secondary Considerations) | Leave a comment

IPR decision finding obviousness and denying entry of amended claims for lack of written description affirmed

Hoyt Augustus Fleming v. Cirrus Design Corporation Docket No. 2021-1561 (IPR2019-01566) (https://cafc.uscourts.gov/opinions-orders/21-1561.OPINION.3-10-2022_1919730.pdf) LOURIE, HUGHES, STOLL March 10, 2022 Brief Summary:  PTAB IPR FWD finding parachute systems claims obvious and denial of entry of amended claims for lacking written description affirmed. … Continue reading

Posted in Inter Parties Review (IPR), IPR, Obviousness (Secondary Considerations), Obviousness-Teaching Away, Written description | Leave a comment

DC decision finding Adapt’s naloxone formulations obvious affirmed

Adapt Pharma, Inc. et al. v. Teva Pharmaceuticals USA, Inc. et al. Docket No. 2020-2106 (https://cafc.uscourts.gov/opinions-orders/20-2106.OPINION.2-10-2022_1906561.pdf) NEWMAN (D), PROST, STOLL February 10, 2021 Brief Summary:  DC decision finding Adapt’s naloxone formulations obvious affirmed. Summary:  Adapt appealed DC final judgment finding … Continue reading

Posted in Generics / ANDA, Obviousness, Obviousness (Secondary Considerations), Obviousness-Teaching Away | Leave a comment

IPR obviousness decisions reversed for lacking a proper explanation and improperly considering the commercial sales evidence

Chemours Company FC, LLC v. Daikin Industries, Ltd. et al. (USPTO as Intervenor) Docket No. 2020-1289, -1290 (IPR2018-00992, -00993) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1289.OPINION.7-22-2021_1808187.pdf) NEWMAN, DYK, REYNA July 22, 2021 Brief Summary:  Board obviousness IPR decisions reversed for lacking a proper explanation and improperly … Continue reading

Posted in Inter Parties Review (IPR), IPR, Obviousness, Obviousness (Secondary Considerations), Obviousness-Teaching Away | Leave a comment

IPR decision finding Baxter’s claims nonobvious reversed due in part to erroneous claim construction

Becton, Dickinson and Company v. Baxter Corporation Englewood Docket No. 2020-1937 (IPR2019-00119) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1937.OPINION.5-28-2021_1784040.pdf) PROST, CLEVENGER, DYK May 28, 2021 Brief Summary:  IPR decision of no obviousness reversed based in part on erroneous claim construction. Summary:  Becton appealed PTAB (“Board”) IPR … Continue reading

Posted in Anticipation (35 USC 102), Claim Construction, Inter Parties Review (IPR), IPR, Obviousness, Obviousness (Secondary Considerations) | Leave a comment

IPR claim construction and obviousness findings affirmed (insufficient evidence of nexus between claims and license agreements)

Siemens Mobility, Inc. v. USPTO Docket No. 2019-1732, -1752 (IPR2017-01669, -02044 LOURIE, MOORE, O’MALLEY September 8, 2020 Non-precedential Brief Summary: Board IPR claim construction and obviousness conclusions affirmed (e.g., insufficient evidence nexus between claims and secondary considerations (license agreements)). Summary: … Continue reading

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Fox Factory, Inc. v. SRAM, LLC Docket No. 2019-1544 (IPR2017-01440) NEWMAN, O’MALLEY, TARANTO May 18, 2020 Non-precedential Brief Summary: Board IPR obviousness FWD affirmed based on SRAM’s secondary evidence (e.g., “industry skepticism and subsequent praise and long-felt need”). Summary: Fox … Continue reading

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Non-obviousness finding for Relistor® OB-listed formulation patent reversed due to structural and functional similarity to prior art compounds

Valeant Pharm. Int., Salix Pharm., Inc. et al. v. Mylan Pharm. Inc., et al., Actavis LLC Docket No. 2018-2097 LOURIE, REYNA, HUGHES April 8, 2020 Brief Summary: DC grant of SJ of non-obviousness of OB formulation patent reversed and remanded … Continue reading

Posted in Generics / ANDA, Obviousness, Obviousness (Secondary Considerations), Obviousness-Teaching Away, Summary Judgment | Leave a comment

Biogen’s Tecfidera-related ‘514 patent not obvious in IPR final written decision due to unexpected results of claimed dosage amount

Mylan Pharmaceuticals Inc. v. Biogen MA Inc. IPR2018-01403 (PTAB Final Written Decision) February 5, 2020 Brief Summary: Biogen’s Tecfidera-related US 8,399,514 B2 (“method of treating…multiple sclerosis” not obvious due in part to unexpected results (IPR final written decision). Summary: Mylan … Continue reading

Posted in Inter Parties Review (IPR), IPR, Obviousness, Obviousness (Secondary Considerations), Uncategorized | Leave a comment

Genentech’s antibody purification claims correctly found anticipated or obviousness in IPR, Fed. Cir. decides

Genentech, Inc. v. Hospira, Inc. (United States, Intervenor) Docket Nos. 2018-1933 (IPR2016-01837) PROST, NEWMAN, CHEN January 10, 2020 Brief Summary: Board’s IPR anticipation and obviousness findings affirmed. Summary: Genentech appealed PTAB (“Board”) IPR final written decision (FWD) finding certain claims … Continue reading

Posted in Anticipation (35 USC 102), Inherency, Inter Parties Review (IPR), IPR, Obviousness, Obviousness (Secondary Considerations), Uncategorized | Leave a comment