Common Sense – IP Currents

September 6, 2010August 4, 2011

Federal Circuit finds Patent Obvious in view of Common Sense despite Objective Evidence

In Wyers v. Master Lock Co., 95 USPQ2d 1525 (Fed. Cir. 2010), plaintiff Philip W. Wyers (Wyers) sued defendant Master Lock Company (Master) for infringement of its patents for hitch pin locks. Hitch pin locks are typically used to secure draw bars or tow-ball mount to a hitch receiver attached to a motor vehicle. Wyers’ patents describe a barbell-shaped lock with a stop portion on one end, a locking head on the other end, and a shank portion which passes through the aligned apertures of the hitch receiver and the tow-ball mount. The use of barbell-shaped locks and locks on trailer hitch receivers was well known in prior art. Specifically, the prior art had examples of locks with a lock head, a shackle having a stop member, a shank, and a latch. Moreover, the prior art also had examples of barbell-shaped locks being used as a trailer hitch receiver lock. Wyers’ patents claim improvements to the prior art locks; mainly

Federal Circuit Clarifies Use of “Common Sense” under KSR

Federal Circuit Confirms the Need For Evidence to Support Use of Common Sense During Obviousness Determinations In Perfect Web Techs. v. InfoUSA, Inc., 92 U.S.P.Q.2d 1849 (Fed. Cir. 2009), the Federal Circuit expounded on the use of common sense in the determination of obviousness under 35 U.S.C. § 103(a). The Supreme Court looked favorably upon the use of a common sense approach in KSR International Co. v. Teleflex Inc., 127 S.Ct 1727; 82 USPQ2d 1385 (2007) decision. The Federal Circuit, in Perfect Web Techs. v. InfoUSA, Inc. relied upon that decision in finding that a bulk E-mailing patent was obvious in light of the prior art reference and the common sense of a person of ordinary skill.

Federal Circuit Affirms Obviousness of Gene Sequencing Claim As “Obvious To Try.”

In In re Kubin, 561 F.3d 1351 (Fed. Circ. 2009), the applicants filed Patent Application Serial No. 09/667,859 drawn to gene sequencing claims. The applicants applied for a patent claiming DNA molecules (“polynucleotides”) that encoded a protein (“polypeptide”) known as the Natural Killer Cell Activation Inducing Ligand (“NAIL”). Natural Killer (“NK”) cells play a major role in fighting tumors and viruses, and express surface molecules that can activate cytotoxic mechanisms when activated. NAIL is a specific receptor protein on the cell surface that is involved in activating NK cells. Applicants claimed the DNA that encodes the CD48-binding region of NAIL proteins. Applicants’ claim 73 described a genus of isolated polynucleotides that encode a protein that binds CD48 and is at least 80% identical to the amino acid sequence that Applicants have disclosed in their specification. In their specification, Applicants disclosed generic examples of variants of the amino acid sequence that could be contemplated under their claimed invention as at least

September 5, 2007August 5, 2011

Federal Circuit Finds Evidence Required to Support Conclusion of “Obvious to Try” Under KSR Test

In Takeda Chemical Industries Ltd. v. Alphapharm Pty. Ltd., 83 U.S.P.Q.2d 1169 (Fed. Cir. 2007), Takeda developed the drug ACTOS®, which is used to control blood sugar in patients who suffer from Type 2 diabetes. ACTOS® uses a specific TZD compound that is covered by U.S. Patent 4,687,777 (the “’777 patent”). Alphapharm filed an Abbreviated New Drug Application (“ANDA”) pursuant to the Hatch-Waxman Act in order to manufacture a generic version of ACTOS®. As such, Takeda filed suit against Alphapharm for infringement of the ‘777 patent. As a defense, Alphapharm asserted that the ‘777 patent was obvious under 35 U.S.C. §103 as the patented TZD compound would have been obvious to try in light of an existing compound admitted to be in the prior art and which is structurally similar to the patented TZD compound: compound b,. The District Court found that Alphapharm had not provided sufficient evidence to maintain a prima facie obviousness defense as there was insufficient evidence