WBIP, LLC v. KOHLER CO. (Fed. Cir. 2016) (P) – The claimed combination as a whole can serve as a nexus for objective indicia of non-obviousness

by Steve Driskill | Jul 19, 2016 | [sub] secondary considerations, Obviousness

The claimed combination as a whole can serve as a nexus between the claimed invention and any objective indicia of non-obviousness. Here, for example, the nexus was found to be provided by the combination of a prior art automobile engine and cooling modifications for...

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...

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...

IN RE GEE (Fed. Cir. 2015) (NP) – A specification’s mere assertion of synergistic effect is insufficient to establish unexpected results

by Steve Driskill | Jun 8, 2015 | [sub] secondary considerations, Obviousness

A specification’s assertion of a possible synergistic effect, without supporting evidence, is insufficient to support a finding of unexpected results and overcome a prima facie case of obviousness. Here, for example, the specification’s assertion that “[i]t is...

ASTRAZENECA LP v. BREATH LIMITED (Fed. Cir. 2015) (NP) – Mere regulatory compliance cannot be used to establish a nexus with commercial success

by Steve Driskill | May 7, 2015 | [sub] secondary considerations, Obviousness

A claimed feature associated with mere regulatory compliance cannot be used to establish the secondary consideration of commercial success for the purposes of rebutting an otherwise prima facie case of obviousness. Here, for example, the claimed “sterility” of a...

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...