The CAFC Vacated a PTAB Finding of Obviousness Because, By Providing an Overly Broad Constructions, the PTAB Read Key Limitations out of the Claims

Los Angeles Biomedical v. Eli Lilly (2016-1518), February 28, 2017.  Before Judges Newman (concurring-in part and dissenting-in-part), Bryson, and Moore. Takeaway: The PTAB’s overly-broad claim constructions resulted in a decision that lacked the necessary factual support needed to find the claims unpatentable as being obvious under the narrower CAFC constructions. …

When the Examiner Agrees With an Attorney’s Argument Presented in an Inter Partes Reexamination, But Cites to No Substantial Evidence, There is no Factual Basis for the Examiner’s Finding That Patent Claims are Unpatentable as Being

Icon Health v. Strava, (2016-1475) February 27, 2017.  Before Judges O’Malley (concurring-in part and dissenting-in-part), Reyna, and Wallach. Takeaway: In order to withstand a challenge on appeal, a determination by the PTAB that the claims of a patent would have been obvious must be supported by substantial evidence, and be …

Obviousness Rejections Must Articulate Rationale To Support a “Common Sense” Motivation To Combine References

  IN RE VAN OS: Jan. 3, 2017. Before Newman (concurring in part and dissenting in part), Moore, and Wallach. Takeaway: Obviousness findings grounded in “common sense” must contain explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness. Procedural Posture: Marcel Van Os …

In Finding Nonanticipation, the Court Cannot Distinguish the Prior Art Based on Features That Are Not Claim Imitations

MELCHIOR v. HILITE INTERNATIONAL: Dec. 12, 2016. Before Dyk (majority), Newman (concur), and Clevenger. (nonprecedential)                                                            Takeaway: Prior art cannot be distinguished on …

Federal Circuit Lacks Appellate Jurisdiction over Board’s Determination of Whether Assignor Estoppel Prohibits IPR Institution

Authored by Rose Cordero Prey, Jonathan Thomas, and William Uhr HUSKY INJECTION MOLDING SYSTEMS LTD. V. ATHENA AUTOMATION LTD., Nos. 2015-1726, 2016-1727 (Fed. Cir. Sep. 23, 2016) (precedential).  On appeal from the PTAB. Before Lourie, Plager, and Stoll. Procedural Posture: Patentee appealed from a decision of the Board in an …