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...

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...

HOFFMANN-LA ROCHE INC. v. APOTEX INC. (Fed. Cir. 2014) (P) – Greater than reasonably expected levels of success

by Steve Driskill | Apr 11, 2014 | [sub] secondary considerations, Obviousness

A greater than expected level of success “does nothing to undercut” a prima facie case of obviousness predicated on a finding of at least a reasonable expectation of success. Background / Facts: The patents at issue here are directed to methods of treating...

IN RE CHAGANTI (Fed. Cir. 2014) (NP) – Common sense as an obviousness rationale

by Steve Driskill | Jan 27, 2014 | [sub] motivation, Obviousness

Although probably dicta, it is encouraging that the court “caution[ed] the Board and the PTO that [obviousness] reasons must be clearly articulated” and that “[i]t is not enough to say that there would have been a reason to combine two references because to do so...

IN RE GIANNELLI (Fed. Cir. 2014) (P) – Physical capability as an obviousness rational for an element “adapted to” perform a specific function

by Steve Driskill | Jan 13, 2014 | [sub] common terms, [sub] motivation, Claim Interpretation, Obviousness

An element that is “adapted to” perform a particular function in the sense of being specially “designed or constructed” for that purpose (as made clear by the specification) is not anticipated or rendered obvious by a structure specifically designed or constructed for...

INSTITUT PASTEUR & UNIVERSITE v. FOCARINO (Fed. Cir. 2013) (P) – Reasonable expectation of success of a particular goal

by Steve Driskill | Dec 30, 2013 | [sub] weighing the evidence, Obviousness

“Knowledge of the goal does not render its achievement obvious.” Obviousness generally requires that a skilled artisan have reasonably expected success in achieving that goal, and that goal in particular, not a different goal that may be a less challenging but also...