Tag Archives: obviousness

Federal Circuit Again Reverses PTAB Obviousness Determination

In what is becoming a familiar basis for reversal of PTAB decisions, the Federal Circuit yet again reversed the PTAB for its failure to adequately explain the basis for combining multiple prior art references in support of its conclusion of obviousness in Personal Web Technologies, LLC v. Apple, Inc.  Specifically, the Federal Circuit (Taranto, Chen, Stoll) … Continue reading this entry

Magnum Offers New Path for Challenging AIA Decisions: Burden of Production

Yesterday, the Court of Appeals for the Federal Circuit (CAFC) held in In re Magnum Oil Tools International (Newman, O’Malley & Chen) that the burden of production to show unobviousness does not shift to a patent owner based upon the Board’s institution decision.  In particular, the CAFC found that Cuozzo’s prohibition of appealing institution decisions does not prevent patent owners from … Continue reading this entry

Federal Circuit Affirms PTAB's IPR Decision Invalidating A Pharmaceutical Patent

Today in Merck v. Gnosis, the Federal Circuit affirmed the PTAB’s IPR Decision finding a pharmaceutical patent invalid for obviousness. Justice Newman vigorously dissented from the majority’s view (Justices Hughes and Plager) that a “substantial evidence” standard should apply to review of PTAB IPR decisions, which may encourage the patent owner to pursue a request … Continue reading this entry