Category Archives: Administrative Agencies

Different Burdens of Proof and Different Records Allowed Different Conclusions on Validity by the PTAB and District Court

Author: Paula E. Miller  
Editor: Jeff T. Watson

In Novartis AG v. Noven Pharmaceuticals Inc., Nos. 16-1678, -1679 (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed the PTAB’s decisions finding obvious certain patents that were previously found nonobvious in district court.

Noven filed IPR petitions relating to patents directed to a pharmaceutical composition for the treatment of Alzheimer’s disease. Although prior district court decisions found certain claims of those patents nonobvious, the PTAB held that those claims would have been obvious.  Novartis appealed, alleging that the PTAB improperly reached a different conclusion than the district court and Federal Circuit in prior litigations. Continue reading

Tagged ,

Diligence Required for Antedating Prior Art Is Reasonably Continuous Diligence—Not Continuous Exercise of Reasonable Diligence

Author: Yoonhee Kim
Editor:  Jeff T. Watson

In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., No. 15-2043 (Fed. Cir. Nov. 15, 2016), the Federal Circuit found the diligence standard the PTAB applied in an IPR “too exacting,” vacating the Board’s decision that patentee PST failed to antedate a reference because reasonable diligence towards reduction to practice was not shown. Continue reading

Tagged ,

A Broader View of Analogous Prior Art

Author: Jonathan J. Fagan
Editor: Lauren J. Dreyer

In Unwired Planet, LLC v. Google Inc., Nos. 2015-1810 & 1811 (Fed. Cir. Nov. 15, 2016), the Federal Circuit affirmed the PTAB’s holding that the patent was invalid as obviousness, agreeing that a cited prior art reference was analogous prior art. The patented method claimed “farther-over-nearer” search result prioritization. When a mobile device user searched for a service, the claimed device would display nearby service providers but would prioritize paying providers. The Court considered whether a primary reference—Brohoff—in view of a second reference—Galitz—rendered the claim obvious. Brohoff taught a wireless network returning location-based results of service providers, while Galitz discussed methods of displaying and organizing results, such as alphabetization. Continue reading

Tagged , , ,