Jonathan Roses

Jonathan Roses counsels an array of clients, including life sciences companies focused on the areas of small molecule pharmaceuticals, pharmaceutical formulations, medical devices and surgical methods.

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The Federal Circuit Giveth, And The Federal Circuit Taketh Away

Posted by Jonathan Roses on Feb 19, 2020

Jonathan Roses

That is the gist of a recent decision by the court, which permitted an IPR Petitioner to use “general knowledge” to fill in missing claim limitations in certain circumstances, but also constrained the PTAB as to what grounds may serve as the basis for instituting trial.

Petitioners seeking IPR of a patent must make their case for unpatentability based on two types of prior art – patents and printed publications. However, in Koninklijke Philips N.V. v. Google LLC (No. 2019-1177), the Federal Circuit held that those references can be used as evidence of the general knowledge, and need not be made part of a specific combination. Specifically, the court found that the Petitioner had properly alleged that although the primary reference relied upon did not disclose each and every element of the claimed invention, the differences between the claimed invention and that reference would have been obvious to a skilled person based on their general knowledge.

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Topics: Prior Art, "Federal Circuit", PTAB

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This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.