Tag Archives: Inherency

CAFC Finds Harmless Error in USPTO Reliance On Doctrine of Inherency

In Southwire Co. v. Cerro Wire LLC, the Federal Circuit upheld the USPTO decision rendered in an inter partes reexamination proceeding that found Southwire’s patent invalid as obvious. Although the court found that the USPTO Board had erred in relying on the doctrine of inherency,  it concluded the error was harmless because the Board’s factual findings … Continue reading this entry

Federal Circuit Notes High Burden Of Invoking Inherency For Obviousness

In Par Pharmaceutical Inc. v. Twi Pharmaceuticals, Inc., the Federal Circuit vacated and remanded the district court decision holding the Par claims at issue obvious. The district court decision rested in part on the doctrine of inherency, but Twi did not establish that the property at issue “necessarily must be present” in the product rendered … Continue reading this entry

Federal Circuit Smells A Rose In Crestor Conception

In Teva Pharmaceutical Industries, Ltd. v. AstraZeneca Pharmaceuticals LP, the Federal Circuit took what could be one of its last looks at the requirements for establishing prior invention under 35 USC § 102(g)(2). The court determined that although conception requires some appreciation of the claimed subject matter, it does not require an understanding of all … Continue reading this entry

Pick Your Poison: Patent-Ineligibility or Inherency?

The Supreme Court’s Bilksi decision recognized three exceptions to 35 USC § 101: “laws of nature, physical phenomena, and abstract ideas.” The Federal Circuit’s decision in King Pharmaceuticals, Inc. v. Eon Labs., Inc. warns us that although satisfying the machine-or-transformation test might prove to be an effective antidote against § 101 defects, a patent claim still may … Continue reading this entry