Tag Archives: Substantial Evidence

Institut Pasteur Obtains Reversal Of USPTO Board Decision Of Obviousness Of Eukaryotic Site-Directed Mutagenesis Methods

In Institut Pasteur v. Focarino, the Federal Circuit found that the obviousness determination by the USPTO Board of Patent Appeals and Interferences was not supported by substantial evidence, and rested on an “erroneous obviousness analysis.” It dismissed the appeal as to one patent, however, because it was amended during reexamination and expired during the pendency … Continue reading this entry

Federal Circuit Reverses Board Rejections That Strayed From Claim Construction

In the non-precedential decision in In re Eaton, the Federal Circuit reversed the USPTO Board decision affirming rejections of anticipation and obviousness. The court found that the Board decision strayed from its own claim construction and was founded on plain factual errors. The Application At Issue The application at issue was Eaton’s U.S. 11/145,716, directed … Continue reading this entry

Federal Circuit Affirms District Court De Novo Review In Section 146 Action

In Streck, Inc. v. Research & Diagnostic Systems, Inc., the Federal Circuit confirmed that a district court is to undertake de novo review when new evidence is introduced in an interference action under 35 USC § 146.… Continue reading this entry

An Ounce of Prevention Can Be Patentable Over A Pound of Cure

In In re Glatt Air Techniques, Inc., the Federal Circuit reversed a decision of the U.S. Board of Patent Appeals and Interferences that held a claim obvious. The decision is remarkable in that it overturned the Board under the deferential "substantial evidence" standard, and found that the USPTO had not even established a prima facie case of obviousness. The court also criticized the Board for dismissing the applicant's evidence of commercial success because it only related to one embodiment of the claims. … Continue reading this entry