Category Archives: Prior Art Invalidity

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 , , ,

Make This For Me! Retaining Contractor to Manufacture Patented Product Does Not Trigger On-Sale Bar

Author: Alex Kwan-Ho Chung, Ph.D.
Editor: Lauren J. Dreyer

Last week, the Federal Circuit (en banc) unanimously held that mere sale of services by a contract supplier to manufacture a patent product for the inventor—without transfer of title to the patented embodiments or the right to market the same—does not constitute a “commercial sale” of the invention to trigger the 35 U.S.C. § 102(b) on-sale bar. The Medicines Co. v. Hospira, Inc., Nos. 2014-1469, -1504, slip op. (Fed. Cir. July 11, 2016) (en banc).

Under the on-sale bar, an issued patent is invalid if its embodied “invention” was “on sale” by anyone more than one year before filing an application for the patent (the “critical date”). According to the Supreme Court’s two-prong Pfaff framework, the claimed invention was “on sale” if, before the critical date, it was (i) the subject of a commercial sale or offer for sale; and (ii) ready for patenting. The sole issue of the en banc appeal was the first prong. Continue reading

Tagged , ,