APPLE INC. v. ITC (Fed. Cir. 2013) (P) – Importance of secondary considerations of non-obviousness

by Steve Driskill | Aug 7, 2013 | [sub] secondary considerations, Obviousness

Secondary considerations of non-obviousness are a vital part of the obviousness inquiry and must be given due consideration. Background / Facts: The patents on appeal here from an adverse decision at the ITC relate to smartphone touchscreens. In particular, one patent...

IN RE DORON ADLER (Fed. Cir. 2013) (P) – Predictable variation as an obviousness rationale

by Steve Driskill | Jul 18, 2013 | [sub] motivation, Obviousness

If a person of ordinary skill can implement a predictable variation of the teachings in the prior art to arrive at the claimed invention, § 103 likely bars its patentability. Background / Facts: The application on appeal here from the PTO is directed to a system “for...

SMITH & NEPHEW, INC. v. REA (Fed. Cir. 2013) (P) – Obviousness of modifications to the physical dimensions of the prior art

by Steve Driskill | Jul 9, 2013 | [sub] level of skill, [sub] operability, Obviousness

Modifying the geometry of elements in a prior art design to accommodate objects of varying sizes is generally within the scope of routine skill possessed by an ordinary person. Physical combinability is not required for a finding of obviousness when the necessary...

IN RE ANTHONY BAYNE (Fed. Cir. 2013) (NP) – Level of ordinary skill

by Steve Driskill | Jun 5, 2013 | [sub] level of skill, Obviousness

The level of skill afforded to the hypothetical ordinary person has been heightened since KSR. Actions such as reversing the order of operations with no practical effect are deemed to be within the creativity of one skilled in the art, especially when the technology...

METSO MINERALS, INC. v. POWERSCREEN INTERNATIONAL (Fed. Cir. 2013) (NP) – Market pressure as an ‘obvious to try’ rationale

by Steve Driskill | May 14, 2013 | [sub] motivation, Obviousness

Market pressure may offer a sufficient obvious to try rationale to combine prior art references when (1) market demand drives design trends for such products, (2) there is a design need or market pressure to solve a problem, and (3) there are a finite number of...

ALLERGAN, INC. v. SANDOZ INC. (Fed. Cir. 2013) (P) – Obviousness weighing of the evidence

by Steve Driskill | May 1, 2013 | [sub] weighing the evidence, Obviousness

The general lesson is that obviousness involves a weighing of the evidence and that it may be the case that no issue alone is dispositive. More specific lessons are that motivation to combine in drug applications “cannot be limited to those reasons the FDA sees fit to...