January 24, 2022

Volume XII, Number 24

Advertisement
Advertisement

January 21, 2022

Subscribe to Latest Legal News and Analysis

Federal Circuit Rules That Physical Combinability Does Not Drive an Obviousness Inquiry

In re Gorelik, No. 2016-1432 (Fed. Cir. June 14, 2016) (non-precedential). On appeal from P.T.A.B. Before Prost, Bryson, and Stoll, per curiam.

Procedural Posture: Appellant patentee appealed P.T.A.B.’s decision affirming patent examiner’s rejection of certain patent claims as obvious. CAFC affirmed.

  • Claim Construction: CAFC affirmed the Board’s construction that, under the “broadest reasonable interpretation” standard, the term “hollow cylindrical” is not limited to cylinders with flat ends but includes cylinders with conical ends.

  • Obviousness: Patentee failed to submit any evidence supporting its contention that the Board’s combination of references would result in an impractically large device. CAFC further noted that an obviousness determination is not based on whether references could be physically combined, but whether the claimed invention is rendered obvious by the teachings of the prior art as a whole. CAFC found that the Board’s decision was supported by substantial evidence.

Copyright © 2022, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VI, Number 349
Advertisement
Advertisement
Advertisement
Advertisement
Advertisement
Advertisement

About this Author

Rose Cordeyo Prey, Andrews Kurth Law Firm, Patent Litigation Attorney
Partner

Rose’s practice focuses on patent litigation and licensing in the mechanical, electrical and computer science arts. With over 10 years of experience in IP litigation, she has represented both plaintiffs and defendants in patent infringement cases involving a wide range of technologies, including consumer electronics, smartphone software, semiconductor fabrication and circuitry, laser diodes, wireless communication, automotive systems, ceiling grid systems, computer and television display technology, security systems, online banking and memory card readers. Rose has...

212-908-6405
Zaed Billah, Andrews Kurth Law Firm, Patent Litigation Attorney
Associate

Zaed has a decade of experience with patent litigation in U.S. District Courts and the U.S. International Trade Commission. He also has substantial experience with inter partes review proceedings in the U.S. Patent and Trademark Office and with appeals before the U.S. Court of Appeals for the Federal Circuit.

Zaed’s litigation responsibilities include taking and defending fact and expert depositions, writing motions and briefs, examining witnesses at trial, and preparing witnesses for deposition and trial. His recent litigations...

212-908-6125
Ian Moore, Andrews Kurth Law Firm, Intellectual Property Attorney
Associate

Ian is an Associate in the Intellectual Property section of the firm’s New York – Battery Park office. Ian’s practice is focused on patent litigation and PTAB proceedings relating to mechanical and electrical engineering technologies, as well as to software.

212-908-6306
Advertisement
Advertisement
Advertisement