Secondary Indicia Must be Connected to “Novel Features” of the Claims

January 19, 2016

In two recent companion cases, the Federal Circuit upheld the Board’s decision that claims related to administering a natural stereoisomer to treat symptoms of folate deficiency would have been obvious. During the inter partes review, the Board considered two prior art references: a European patent application that discloses treating elevated levels of homocysteine, often associated with folate… Read more »

Patent Eligibility of Diagnostic Methods Still Uncertain in Wake of Federal Circuit’s Denial of En Banc Review of Ariosa v. Sequenom

December 14, 2015

The patent eligibility of diagnostic testing methods remains uncertain after the Federal Circuit refused to rehear Ariosa v. Sequenom.1 In Ariosa, the Federal Circuit panel found that Sequenom’s patent on fetal DNA testing was patent ineligible, despite noting the high commercial value of the technology. The panel concluded that the claims failed Mayo’s2 two step analysis for patent eligibility. The… Read more »

Getting it Right the First Time in IPR Petitions: Ariosa v. Verinata

November 23, 2015

The Federal Circuit vacated the PTAB’s finding of nonobviousness of Verinata’s patent directed to methods of noninvasive prenatal testing, and remanded the case back to the Board.1 The Federal Circuit remanded because it couldn’t conclude whether the Board erred based on the PTAB’s opinion. The Board’s language was too vague to come to a definitive conclusion… Read more »

Is Experimental Testing Necessary to Establish Inherent Obviousness at the PTAB?

May 19, 2015

Summary At the end of last year, in Par Pharmaceuticals, the Federal Circuit affirmed the doctrine of inherent obviousness, but ultimately found that the defendants had not demonstrated that the claim limitation missing in the prior art was “necessarily . . . present, or the natural result of the combination of elements explicitly disclosed by… Read more »

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