ARTICLE
18 May 2016

Federal Circuit Patent Updates - May 2016

W
WilmerHale

Contributor

WilmerHale provides legal representation across a comprehensive range of practice areas critical to the success of its clients. With a staunch commitment to public service, the firm is a leader in pro bono representation. WilmerHale is 1,000 lawyers strong with 12 offices in the United States, Europe and Asia.
While the Board's requirements are strict ones, they are requirements of which petitioners are aware when they seek to institute an IPR."
United States Intellectual Property

View previous updates...



Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. (No. 2015-1693, 5/9/16) (O'Malley, Wallach, Hughes)

O'Malley, J. Affirming Board decision in inter partes review that challenged claims, related to labeling nucleotides, were not obvious. While the Court agreed with the Board's conclusion of obviousness, the Court criticized the Board's analysis of "reasonable expectation of success." "The Board seemed to believe that the 'reasonable expectation of success' inquiry looked to whether one would reasonably expect the prior art references to operate as those references intended once combined. That is not the correct inquiry—one must have a motivation to combine accompanied by a reasonable expectation of achieving what is claimed in the patent-at-issue." Also, the Board properly rejected new arguments raised in the petitioner's reply. "Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute. While the Board's requirements are strict ones, they are requirements of which petitioners are aware when they seek to institute an IPR."

A full version of the text is available in PDF form.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.

Learn More