Archive for the ‘Prior Art’ Category

Apotex v Wyeth Explores Structural Obviousness

Thursday, September 1st, 2016

Lately, I’ve been feeling that the only case law engaging enough to write about has involved S. 101 issues, so it was a welcome break to comment on some classic principles of organic chemistry.

iStock_000002291402Small(2)Apotex filed an IPR petition that Wyeth’s U.S. Patent No. 8,879,828 was obvious in view of four references. The Board granted the petition but went on to find that the antibiotic compositions claimed in the patent were not obvious. The Fed. Cir. agreed that the Board’s final decision was supported by substantial evidence  (Appeal No.  2015-1851 (Fed. Cir., August 6, 2016)  —Judges Lourie, Wallach and Hughes, Lourie writing).


Voter Verified Decision Elaborates on Internet Publication

Tuesday, November 6th, 2012

Yesterday a panel of Judges (Lourie, Reyna and Wallach) in Voter Verified, Inc. v. Premier Election Solutions, Appeal nos. 2011-1559, 2012-1016 (Fed. Cir. November 5, 2012) expanded on the Fed. Cir.’s earlier decision In re Lister, 583 F.3d 1307 (Fed. Cir. 2009)(archived under “Prior Art”), which in turn cited In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), to affirm a district court’s holding that a patent on “a self-verifying voting system” was obvious in view of an article (the “Benson article”) that had been posted on the “Risks Digest Website” well prior to the 102(b) bar date.

Noting that the “key inquiry is whether the reference was made ‘sufficiently available to the public interested in the art’ before the critical date”, Klopfenstein was quoted as establishing that “Whether a reference is publicly available is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to member of the public.”


Fed. Cir. Holds Provisionals Are U.S. Filings For 102(E)

Thursday, July 8th, 2010

In case you wondered if this was a settled question in the ever-shifting world of section 102, yesterday, In re Giacomini, (Rader, C.J.), (copy at end of post) the panel held that the effective U.S. filing date of a U.S. patent asserted to be prior art against a “later-filed patent” was the filing date of the corresponding U.S. provisional application claiming the same invention.

The court did not find merit in Applicants’ argument that the outcome should be controlled by In re Hillmer, 359 F.2d 859 (CCPA 1966) in which the court held that the date of  a foreign-filed priority application was not the effective filing date of a U.S. patent asserted to be prior art under 102(e). If nothing else, the decision underscores the necessity of fully disclosing the invention generically and specifically  in a provisional filing, even if enablement and WDR may be necessarily “iffy” for early-stage technologies.

in re giacomini

Does a Slideshow Show Too Much? In re Klopfenstein Revisited

Friday, September 25th, 2009

In re Lister, the Federal Circuit repeatedly cited In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (link below), a decision that held that a poster presentation that was available for viewing at a meeting for 2-3 days was a “printed publication” under 102(b). This decision has lots of interesting dicta that indicates, for example, that a slideshow with an oral presentation would not necessarily be considered a “printed publication” if no printed copies were available since the slides were only transiently visible. A thesis defense per se would also not be considered a printed publication. Even the brief display of a poster may not qualify as a printed publication, and presentation of the poster at a meeting with a non-copying notice may have disqualified the poster as a printed publication.

So if “your professor” tells you that he or she disclosed the invention in a slideshow or a poster at a scientific meeting, don’t assume that all rights are gone, or even that absolute novelty has been lost abroad. I spoke to a UK associate some years ago who told me that the burden of proof imposed by the court on a defendant who tries to rely on an oral presentation or slideshow as novelty-destroying is extremely high. (I won’t go into detail here, since associates may well differ on this point, and you should contact your own, of course.) ‘Nuff said!

In Re Klopfenstein.pdf