PURDUE PHARMA L.P. v. DEPOMED, INC. (Fed. Cir. 2016) (NP) – A problem solved by a proposed combination must be known generally or derived directly from the prior art

by Steve Driskill | Mar 24, 2016 | [sub] motivation, Obviousness

A problem to be solved that forms the basis of a reason to combine the prior art must be known in the art or derived directly from the prior art to avoid the impropriety of hindsight bias. Here, for example, the problem of solubility to be solved by the proposed...

HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. (Fed. Cir. 2016) (NP) – A well-understood tradeoff between two variables to achieve the same end-product is generally obvious

by Steve Driskill | Feb 26, 2016 | [sub] motivation, Obviousness

Making a well-understood tradeoff between two variables to achieve the same end-product is generally obvious. Here, for example, decreasing an annealing temperate while increasing a corresponding annealing time was found to be obvious in view of the well-known...

ACCO BRANDS CORPORATION v. FELLOWES, INC. (Fed. Cir. 2016) (P) – It is generally obvious to try any of a finite number of arrangements of prior art elements

by Steve Driskill | Feb 22, 2016 | [sub] motivation, Obviousness

It is generally obvious to try any of a finite number of arrangements of prior art elements even if a subset of those arrangements fall outside of the claim scope at issue. Here, for example, the fact that there were only two feasible arrangements of two sensors...

CUTSFORTH, INC. v. MOTIVEPOWER, INC. (Fed. Cir. 2016) (NP) – An articulated reason for modifying a prior art element is required even for matters of “design choice”

by Steve Driskill | Jan 22, 2016 | [sub] motivation, Obviousness

An articulated reason for modifying a prior art element is required even for matters of “design choice” in order to establish a prima face case of obviousness. Here, for example, the fact that a lead receptacle could have been positioned on a mounting block and that...

PROMETHEUS LABORATORIES, INC. v. ROXANE LABORATORIES, INC. (Fed. Cir. 2015) (P) – It is obvious to treat a subset of patients with an otherwise known procedure without unexpected results

by Steve Driskill | Nov 10, 2015 | [sub] motivation, Obviousness

It is generally obvious to treat a limited subset of patients with an otherwise known procedure when there are no unexpected results directly attributable to the patient subset itself. Here, for example, limiting the patient pool for a drug treating irritable bowel...

BELDEN INC. v. BERK-TEK LLC (Fed. Cir. 2015) (P) – Motivation to combine prior art references is not negated by a clash in otherwise inconsequential aspects

by Steve Driskill | Nov 5, 2015 | [sub] motivation, Obviousness

Motivation to combine two prior art references is not negated by a clash in inventive aspects that are inconsequential to the problem addressed by the proposed combination. Here, for example, differences in wire configurations (insulated vs. bare) was found to be...