WARNER CHILCOTT COMPANY, LLC v. TEVA PHARMACEUTICALS USA, INC. (Fed. Cir. 2014) (NP) – Confirming that extrapolations from known data are operational is not sufficient to preclude obviousness

by Steve Driskill | Nov 18, 2014 | [sub] motivation, Obviousness

Merely confirming that extrapolations from known data are operational is not sufficient to preclude a conclusion of obviousness. Here, for example, a monthly dosing regimen in line with suggested but untested extrapolations from daily dosing regimens was found to be...

MALICO, INC v. LSI LOGIC CORPORATION (Fed. Cir. 2014) (NP) – An obviousness rationale is still required when prior art is clearly capable of being modified as claimed

by Steve Driskill | Nov 17, 2014 | [sub] motivation, Obviousness

An obviousness rationale is required even when it is readily apparent that the prior art is physically capable of being modified to meet the limitations claimed. Here, for example, the fact that a prior art heat sink retaining device was physically capable of being...

IN RE TAYLOR MADE GOLF CO. (Fed. Cir. 2014) (NP) – Common knowledge to be considered for obviousness even if not known for invention’s specific purpose

by Steve Driskill | Sep 30, 2014 | [sub] motivation, Obviousness

Limitations that are common knowledge must be considered as part of the obviousness analysis even if the prior art does not disclose them for the specific purpose of the invention. Here, for example, the fact that press fitting as a means of attachment was common...

FERRING B.V. v. WATSON LABORATORIES INC. (Fed. Cir. 2014) (P) – Obviousness requires a showing why skilled artisan would have chosen specific limitations claimed

by Steve Driskill | Aug 22, 2014 | [sub] motivation, Obviousness

In establishing obviousness under 35 U.S.C § 103, it is not sufficient to merely assert in a conclusory manner that certain limitations “would have been obvious or could have been predicted” while failing to address why one of ordinary skill in the art would have...

ABBVIE INC. v. KENNEDY INST. OF RHEUMATOLOGY (Fed. Cir. 2014) (P) – Species are unpatentable over genus when skilled artisan can envision every member of the class

by Steve Driskill | Aug 21, 2014 | [sub] motivation, [sub] obviousness-type, Double Patenting, Obviousness

Although “[i]t is well-settled that a narrow species can be non-obvious and patent eligible despite a patent on its genus,” species are unpatentable when the prior art disclosures “describe the genus containing those species such that a person of ordinary skill in the...

I/P ENGINE, INC. v. AOL INC. (Fed. Cir. 2014) (NP) – Utilizing readily available information for its intended purpose is an obvious, routine step

by Steve Driskill | Aug 15, 2014 | [sub] motivation, Obviousness

In accordance with KSR’s mandate that “[a] person of ordinary skill is … a person of ordinary creativity, not an automaton,” the court emphasized that “the obviousness inquiry must take account of the ‘routine steps’ that a person of ordinary skill in the art...