This is a guest post from the Chisum Patent Academy.
Chisum and Mueller selected the following fifteen (15) cases as the most impactful of the Federal Circuit’s precedential patent law decisions issued in 2016. We excluded Supreme Court patent decisions, all of which are inherently impactful. Our remarks about each case indicate why we think it made a difference–for better or worse. Our comments, views, and opinions are strictly our own and do not reflect the views of any persons other than Chisum and Mueller.
We have listed our selections by patent law topic/issue rather than rank the cases in an overall sense. Nor did we attempt to include every disputed issue in patent law. The order of topics and the number assigned to each case within a topic does not indicate a ranking.
Read the full Awards list.
Bloomberg BNA posted an overview of the FDA’s guide on biosimilar development.
Read the overview here.
In re NuVasive Emphasizes the Importance of Reasoning in the Obviousness Question.
Since KSR, 127 S.Ct. 1727 (2007), repudiated as “rigid and mandatory” the Federal Circuit “rule” for obviousness – that the prior art must provide a teaching, suggestion or motivation (TSM) to combine references so as to arrive at the claimed invention. Since then, it is my opinion that reliance on secondary considerations to support obviousness determinations has steadily increased. Such considerations include unexpected results, long-felt need, failure of others, teachings away from the invention, commercial success and the like. Likewise, Examiners have increased their reliance on factors such as common sense and routine optimization.
On November 14th, the PTO hosted a roundtable discussion in Alexandria on s. 101 issues in which both industry reps and practitioners were invited to dissect the current Office guidelines. The structure was unique as there were 33 invited speakers [I was one of them] compressed into 3.75 hours. We each had about 6 minutes to address three PTO representatives, including Robert W. Bahr, Deputy Director for Examination Policy, who has been signing off on the recent memorandums on examination policy. There was a representative from the solicitor’s office and another gentleman whose name was not audible from where I was sitting [seats were assigned based on the order of the presentations, and I was in the bleachers.] The speakers addressed all areas of technology affected by the rise of section 101.