Category Archives: Obviousness

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

“[R]esult that was inherent in the prior art” cannot overcome obviousness based on inherency

Hospira, Inc. v. Fresenius Kabi USA, LLC Docket Nos. 2019-1329, -1367 NEWMAN, LOURIE, TARANTO January 9, 2020 Brief Summary: DC obviousness judgment of affirmed as “wherein” clause only describes “a result that was inherent in the prior art”. Summary: Hospira … Continue reading

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Persion’s Zohydro ER claims invalid for obviousness and lack of written description (“inherently result in the claimed [PK] parameters”, functional limitations too broad)

Persion Pharmaceuticals LLC v. Alvogen Malta Operations Ltd. Docket Nos. 2018-2361 O’MALLEY, REYNA, CHEN December 27, 2019 Brief Summary: DC findings of invalidity of Persion’s hepatic insufficiency claims related to Zohydro ER for obviousness and no WD affirmed. Summary: Persion … Continue reading

Posted in Functional limitations, Inherency, Method claims, Obviousness, Obviousness (Secondary Considerations), Uncategorized, Written description | Leave a comment

Secondary consideration presumption of a nexus only where the product “is the invention disclosed and claimed”

Fox Factory Inc. v. SRAM LLC Docket Nos. 2018-2024, -2025 (IPR2017-00118, -00472) PROST, WALLACH, HUGHES December 18, 2019 Brief Summary: Board IPR decision of no obviousness vacated and remanded for reevaluation of secondary consideration evidence with respect to the required … 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

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

Posted in Analgous Art, Inter Parties Review (IPR), IPR, Obviousness, Uncategorized | Leave a comment

Remanded IPR decision reversed and vacated as “supported by…faulty reasoning”

In Re: IPR Licensing, Inc. Docket Nos. 2018-1805 (IPR2014-00525, IPR2015-00074) NEWMAN, O’MALLEY, TARANTO November 22, 2019 Brief Summary: Board remanded IPR decision reversed and vacated as “supported by the same faulty reasoning” as the first IPR decision. Summary: This appeal … Continue reading

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IPR decisions of no obviousness of Wyeth’s vaccine claims vacated and remanded as “too cryptic to survive judicial review”

Merck Sharpe & Dohme Corp. v. Wyeth LLC Docket Nos. 2018-2133, -2134 (IPR2017-00378, -00380) DYK, PLAGER, STOLL November 26, 2019 Non-precedential Brief Summary: Board IPR decisions regarding Wyeth’s vaccine claims vacated and remanded as “too cryptic to survive judicial review”. … Continue reading

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