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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.”).
The DOJ's Corporate Enforcement Policy: One Year Later
The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.
The DOJ's New Parameters for Evaluating Corporate Compliance Programs
The parameters set forth in the DOJ's memorandum have implications not only for the government's evaluation of compliance programs in the context of criminal charging decisions, but also for how defense counsel structure their conference-room advocacy seeking declinations or lesser sanctions in both criminal and civil investigations.
Use of Deferred Prosecution Agreements In White Collar Investigations
This article discusses the practical and policy reasons for the use of DPAs and NPAs in white-collar criminal investigations, and considers the NDAA's new reporting provision and its relationship with other efforts to enhance transparency in DOJ decision-making.
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.
A Lawyer's System for Active Reading
Active reading comprises many daily tasks lawyers engage in, including highlighting, annotating, note taking, comparing and searching texts. It demands more than flipping or turning pages.