PAR PHARMACEUTICAL, INC. v. TWI PHARMACEUTICALS, INC. (Fed. Cir. 2014) (P) – Inherent limitations of the prior art must be commensurate in scope with the actual limitations claimed

by | Dec 3, 2014 | [sub] inherency, Anticipation

Inherent limitations of the prior art must be commensurate in scope with the actual limitations claimed in order to establish anticipation or obviousness. Here, for example, an inherent food effect advantage of nanosized formulations of a particular drug was found to...

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 | 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 | 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...

ULTRAMERCIAL, INC. v. HULU, LLC (Fed. Cir. 2014) (P) – Addition of novel components to claimed ideas does not necessarily turn abstraction into something concrete

by | Nov 14, 2014 | [sub] Alice step one, Subject Matter Eligibility

The addition of novel or non-routine components to a claimed idea does not necessarily turn an abstraction into something concrete for the purposes of subject matter eligibility under 35 U.S.C. § 101. Here, for example, a novel advertisement mechanism was found to be...

ROZBICKI v. CHIANG (Fed. Cir. 2014) (NP) – Claim differentiation presumptively bars interpretation if defining characteristics are in dependent claims

by | Nov 14, 2014 | [sub] claim differentiation, Claim Interpretation

Claim differentiation presumptively bars a narrowing claim interpretation when its defining characteristics are recited in the dependent claims, even when the interpretation itself may not be literally recited there. Here, for example, the claimed “etching” step was...