Archive | Section 102 and 103 Invalidity

Federal Circuit Revisits Secondary Considerations and Effect of Age of Cited References under Section 103

The Federal Circuit recently clarified the suitability of certain types of evidence in analyses of patentability under section 103. Nike, Inc. v. Adidas AG, No. 2014-1719 (Fed. Cir. February 11, 2016) (opinion by Judge Chen, joined by Judges Mayer and Stoll). One question was: must evidence of secondary considerations be considered by the United States […]

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When Is a Document on the Internet a “Printed Publication?”

Addressing an issue with which patent litigators and prosecutors alike regularly grapple, the Federal Circuit recently held that a graduate student’s report, provided on her personal web page, was not a “printed publication” under 35 U.S.C. § 102(b) (pre-America Invents Act).  Blue Calypso, LLC. V. Groupon, Inc., Nos. 2015-1391, 2015-1393, 2015-1394 (Fed. Cir. March 1, […]

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Federal Circuit Provides a Lesson on How Not to Rebut an Obviousness Rejection

Has the Federal Circuit made it more difficult to rebut obviousness rejections by demonstrating that the cited references teach away from the claimed invention? One way to show that references teach away from a claimed invention is to show that a combination of references alleged by the patent examiner would render the prior art inoperable […]

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PTAB Reverses Rejection Because Patent Examiner Applied a “Broader Than Reasonable Interpretation”

Patent examiners often rely on claim interpretations that seem ridiculous to applicants. Here is a case showing that applicants should push back in such situations when claims are rejected under a “broadest reasonable interpretation.” Moreover, the case shows applicants that, contrary to examiners’ admonitions that the specification will not be read into the claims, clear […]

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Beware: An Enabling Specification Can Also Enable Prior Art

The Federal Circuit has held that a prior art reference was enabled in part because admissions in an applicant’s own specification explained what would have been known to one of ordinary skill in the art.  In re Morsa, No. 2015-1107 (Fed. Cir. Oct. 19, 2015).  Pointing out knowledge of one skilled in the art can […]

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PTAB Reverses Obviousness Rejection because Nothing “Ties” Approaches of Prior Art References Together

In Ex parte Gilbert (Appeal 2012/005795; App. No. 11/200,749), the Patent Trials and Appeals Board (PTAB) held that the Examiner had not established that one of ordinary skill in the art would have had an apparent reason to combine the references because there is nothing that would “tie” the approaches of the references together. The […]

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Usenet Post Qualifies as “Printed Publication” Prior Art

A post to an Internet newsgroup nine months before the priority date of U.S. Patent No. 6,081,835 qualified as a “printed publication” that could be used as invalidating prior art.  Suffolk Technologies, LLC v. AOL, Inc., No. 2013-1392 (Fed. Cir. May 27, 2014).  This holding was one of the bases on which the Federal Circuit […]

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When Is a Document Publicly Available (and Therefore Prior Art)?

A document can qualify as “prior art” under 35 U.S.C. § 102 even when the document is what one might charitably describe as barely publicly available, and even when the document is incomplete. In re Enhanced Security Research LLC, No. 2013-1114 (Fed. Cir. Jan 13, 2014).  In this case, a divided Federal Circuit panel upheld […]

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Evidence Not Required to Rebut Presumption That Anticipatory Prior Art Is Enabled

The Federal Circuit has clarified a patent applicant’s burden to rebut the presumption that a prior art reference is enabling of allegedly anticipated claims. In re Morsa, No. 2012-1609 (Fed. Cir. April 5, 2013). The court therefore vacated and remanded a decision from the Board of Patent Appeals and Interferences, where the Board had affirmed […]

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