Scholarship

This month we highlight two papers exploring research related to the Federal Circuit.

Re-Thinking the “Motivation to Combine” in Patent Law

In his recent paper, Joshua Lee Sohn argues that the “motivation-to-combine” inquiry is not a question of fact. First, the paper argues that treating the “motivation-to-combine” inquiry as a question of fact is inconsistent with the Supreme Court’s decision in KSR v. Teleflex, Inc. Second, Sohn argues that:

when the motivation-to-combine is treated as a question of fact, it essentially swallows up the entire obviousness analysis, leaving nothing for a court to decide as a question of law.

Sohn suggests that the Federal Circuit should adopt the “motivation-to-combine” inquiry as a question of law. In addition to the doctrinal reasons elaborated on in the paper, Sohn argues that treating the “motivation-to-combine” inquiry as a question of law will make patent litigation less cumbersome.

Ajinomoto v. ITC, the Doctrine of Equivalents, and Biomolecule Claim Limitations at the Federal Circuit

In a recent article, Professor Christopher Holman explores the doctrine of equivalents and what the Federal Circuit’s recent decision in Ajinomoto v. ITC means for biotechnology patents. The article provides an explanation of the doctrine of equivalents and summarizes recent Federal Circuit decisions applying the doctrine to biotechnology patents.

Professor Holman states that Ajinomoto was the first case that the Federal Circuit found infringement under the doctrine of equivalents where the claim limitation at issue recited a biomolecule. The article concludes with a detailed recap of both the majority and dissent’s reasoning Ajinomoto. Professor Holman explains that the dissent’s disagreement over the application of prosecution history estoppel is fertile ground for future en banc review.

For more on this case, see our coverage.