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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.”).
Beach Boys Songs Written Decades Ago Triggered Current Quarrel With Lawyers
There's current litigation in the ongoing Beach Boys litigation saga. A lawsuit filed in 2019 against Nevada residents Mike Love and his wife Jacquelyne in the U.S. District Court for the District of Nevada that alleges inaccurate payment by the Loves under the retainer agreement and seeks $84.5 million in damages.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Transfer Tax Implications on Real Property Leases
The real property transfer tax does not apply to all leases, and understanding the tax rules of the applicable jurisdiction can allow parties to plan ahead to avoid unnecessary tax liability.