K-SWISS INC. v. GLIDE’N LOCK GMBH (Fed. Cir. 2014) (NP) – Obviousness of range optimizations

by Steve Driskill | Apr 23, 2014 | [sub] motivation, Obviousness

“[W]here the general conditions of a claim are disclosed in the prior art, … it is not inventive to discover the optimum or workable ranges by routine experimentation.” Background / Facts: The patent on appeal here from reexamination at the PTO is directed to air or...

IN RE WALLEN (Fed. Cir. 2014) (NP) – The PTO’s evidentiary burden

by Steve Driskill | Apr 23, 2014 | [sub] examination, PTO Procedure

When the PTO makes “core factual findings in a determination of patentability,” it “cannot simply reach conclusions based on its own understanding or experience—or on its assessment of what would be basic knowledge or common sense.” Instead, the PTO “must point to...

BRAINTREE LABORATORIES, INC. v. NOVEL LABORATORIES, INC. (Fed. Cir. 2014) (P) – Claim term definitions in the specification

by Steve Driskill | Apr 22, 2014 | [sub] importing limitations, Claim Interpretation

A definition section in the specification will almost certainly be taken as controlling, even, as here, where it contradicts the preferred embodiment. If used at all, extra care and attention should be taken to draft definitions only to the extent absolutely...

GILEAD SCIENCES, INC. v. NATCO PHARMA LIMITED (Fed. Cir. 2014) (P) – Expiration dates control for obviousness-type double patenting inquiries

by Steve Driskill | Apr 22, 2014 | [sub] obviousness-type, Double Patenting

A patent that issues after but expires before another patent still qualifies as a double patenting reference for that other patent. This expiration-date centric analysis is a departure from the traditional issue-date centric analysis. “[L]ooking to patent issue dates...

SANOFI-AVENTIS DEUTSCHLAND v. GLENMARK PHARMACEUTICALS (Fed. Cir. 2014) (P) – Inventor’s own motivations with regard to obviousness

by Steve Driskill | Apr 21, 2014 | [sub] motivation, Obviousness

An inventor’s own motivations (e.g., as expressed in a patent application) are generally irrelevant to the obviousness analysis. “Patentability does not turn on how the invention was made, but on whether it would have been obvious to a person of ordinary skill in the...