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Tag Archives: Unexpected Results

Federal Circuit Upholds One Claim Covering Combigan

Posted by Courtenay Brinckerhoff on Posted in 103; Federal Circuit Decisions

In Allergan, Inc. v. Sandoz, Inc., the Federal Circuit reversed the district court in part, finding that Allergan’s composition claims and most of its method claims are invalid as obvious, but upholding one method claim because it recites a non-obvious result. Some of the court’s reasoning in this opinion is troubling, and the non-obvious result may be difficult to extrapolate to other cases, but this case illustrates the value of including a variety of claims that focus on different aspects of the same invention.Continue reading this entry

Federal Circuit Clarifies Obviousness-Type Double Patenting Between Products And Methods

Posted by Leon Y. Lum on Posted in Federal Circuit Decisions; Obviousness Type Double Patenting

In Eli Lilly and Company v. Teva Parenteral Medicines, Inc., the Federal Circuit affirmed the district court’s decision that Eli Lilly’s patent to pemetrexed is not invalid for obviousness-type double patenting. The Federal Circuit’s decision provides important guidance on one of the most complex areas of  U.S. patent jurisprudence, and explains how information in the specification can be used in a double patenting analysis, discusses when obviousness-type double patenting may arise between product and method claims, and notes that unexpected results may be relevant to obviousness-type double patenting.Continue reading this entry

Federal Circuit Permits Post-Filing Date Unexpected Results To Support Non-Obviousness

Posted by Courtenay Brinckerhoff on Posted in 103; Federal Circuit Decisions

The Federal Circuit decision in Genetics Institute, LLC v. Novartis Vaccines & Diagnostics, Inc. is interesting in several respects. In this article, I look at the court’s decision to permit unexpected results discovered after the patent applications at issue were filed to support non-obviousness.

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Federal Circuit Reverses Rejection Based On Board Conjecture

Posted by Courtenay Brinckerhoff on Posted in 103; Federal Circuit Decisions

The recent Federal Circuit decision in In re Huai-Hung Kao addressed obviousness rejections in three separate patent applications assigned to Endo Pharmaceuticals, Inc. The court affirmed the Board’s rejections in two of the applications, but vacated and remanded in the other application. This article looks at the court’s finding in that application that the rejection was “based . . . on factual findings lacking in substantial evidence,” and also discusses the court’s commentary on the “nexus” requirement for secondary evidence of non-obviousness, including unexpected results and commercial success.

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