IN RE CREE, INC. (Fed. Cir. 2016) (P) – Self-serving statements from researchers about their own work does not constitute industry praise

by Steve Driskill | Mar 21, 2016 | [sub] secondary considerations, Obviousness

Self-serving statements from researchers about their own work does not constitute industry praise for the purposes of establishing secondary evidence of nonobviousness. Here, for example, press releases describing work similar to the claimed invention but made by...

HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. (Fed. Cir. 2016) (NP) – A well-understood tradeoff between two variables to achieve the same end-product is generally obvious

by Steve Driskill | Feb 26, 2016 | [sub] motivation, Obviousness

Making a well-understood tradeoff between two variables to achieve the same end-product is generally obvious. Here, for example, decreasing an annealing temperate while increasing a corresponding annealing time was found to be obvious in view of the well-known...

ACCO BRANDS CORPORATION v. FELLOWES, INC. (Fed. Cir. 2016) (P) – It is generally obvious to try any of a finite number of arrangements of prior art elements

by Steve Driskill | Feb 22, 2016 | [sub] motivation, Obviousness

It is generally obvious to try any of a finite number of arrangements of prior art elements even if a subset of those arrangements fall outside of the claim scope at issue. Here, for example, the fact that there were only two feasible arrangements of two sensors...

CUTSFORTH, INC. v. MOTIVEPOWER, INC. (Fed. Cir. 2016) (NP) – An articulated reason for modifying a prior art element is required even for matters of “design choice”

by Steve Driskill | Jan 22, 2016 | [sub] motivation, Obviousness

An articulated reason for modifying a prior art element is required even for matters of “design choice” in order to establish a prima face case of obviousness. Here, for example, the fact that a lead receptacle could have been positioned on a mounting block and that...

IN RE URBANSKI (Fed. Cir. 2016) (P) – A proposed combination need not be operable for all of the benefits disclosed in the modified reference

by Steve Driskill | Jan 8, 2016 | [sub] teaching away, Obviousness

A proposed combination of prior art references does not have to be operable for all of the benefits disclosed in the reference being modified. Here, for example, a prima facie case of obviousness was found to be unrebutted by a showing that certain stability benefits...

SOUTH ALABAMA MEDICAL SCIENCE v. GNOSIS S.P.A. (Fed. Cir. 2015) (P) – No nexus is required between the claimed invention and a product ultimately produced under license

by Steve Driskill | Dec 17, 2015 | [sub] secondary considerations, Obviousness

The patentee need not necessarily establish an independent nexus between the products produced under a license agreement and the claimed invention for licensing activity to be a relevant secondary factor in the obviousness inquiry. Here, for example, the fact that the...