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Post-Issuance Experimentation As Evidence of Unexpected Results
“A patent may not be obtained … if the … subject matter [sought to be patented] as a whole would have been obvious at the time the invention was made.” 35 U.S.C. '103(a). Establishment of prima facie obviousness requires satisfaction of three separate criteria. First, there must be some suggestion or motivation to one of ordinary skill in the art to modify a reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Third, the prior art reference (or references when combined) must teach or suggest each and every limitation in the claim under examination. In re Vaeck, 947 F.2d 488, 20 U.S.P.Q.2d 1438 (Fed. Cir. 1991). With respect to chemical compounds, a prima facie case of obviousness may be made based on structural similarity of the claimed compound to other known compounds since “one skilled in the art [would be motivated] to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313 (CCPA 1979).
To rebut a prima facie case of obviousness, aside from an analysis of the prior art, secondary considerations, such as evidence of commercial success or of unexpected functions and results of the invention may be considered. For example, a prima facie case of obviousness based on structural similarity is rebuttable by proof that the claimed compound possesses unexpectedly advantageous or superior properties. In re Papesch, 315 F.2d 381 (CCPA 1963). The utility of considering such secondary considerations is that they “focus attention on economic and motivational rather than technical issues and are, therefore, more susceptible of judicial treatment than are the highly technical facts often present in patent litigation,” Graham v. John Deere Co., 383 U.S. 1, 35-36 (1966), and they guard against the improper use of hindsight reasoning based on knowledge gleaned from the inventor's own work. Glaros v. H.H. Robertson Co., 600 F. Supp. 342, 344 (N.D. Ill. 1984), aff'd, 797 F.2d 1564 (Fed. Cir. 1986) (“The Federal Circuit has … repeatedly emphasized the importance of the inquiry into secondary considerations, such as the commercial success of the invention and the prior failure of others, as the strongest precaution against judging an invention from the perspective of 20/20 hindsight.”).
Bankruptcy Sales: Finding a Diamond In the Rough
There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.
Judge Rules Shaquille O'Neal Will Face Securities Lawsuit for Promotion, Sale of NFTs
A federal district court in Miami, FL, has ruled that former National Basketball Association star Shaquille O'Neal will have to face a lawsuit over his promotion of unregistered securities in the form of cryptocurrency tokens and that he was a "seller" of these unregistered securities.
Why So Many Great Lawyers Stink at Business Development and What Law Firms Are Doing About It
Why is it that those who are best skilled at advocating for others are ill-equipped at advocating for their own skills and what to do about it?
Blockchain Domains: New Developments for Brand Owners
Blockchain domain names offer decentralized alternatives to traditional DNS-based domain names, promising enhanced security, privacy and censorship resistance. However, these benefits come with significant challenges, particularly for brand owners seeking to protect their trademarks in these new digital spaces.
Supreme Court Rules Rejection of Trademark License Does Not Rescind Rights of Licensee
Mission Product Holdings, Inc. v. Tempnology, LLC The question is whether a debtor's rejection of its agreement granting a license "terminates rights of the licensee that would survive the licensor's breach under applicable nonbankruptcy law."