Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights:
- a blog post discussing the Solicitor General’s amicus brief urging the Supreme Court to deny certiorari in a case concerning inter partes review estoppel; and
- an article highlighting takeaways from a recent precedential opinion by the Federal Circuit addressing analogousness of prior art references.
Eileen McDermott posted to IPWatchdog a detailed report on the Solicitor General’s amicus brief urging the Supreme Court to deny certiorari in Apple Inc. v. California Institute of Technology, a patent case concerning inter partes review estoppel. In her post, McDermott notes how the Solicitor General argues that, “once Apple omitted [patentability challenges] from its petitions and the USPTO instituted reviews to consider other patentability challenges, petitioners’ opportunity to raise the disputed grounds in those reviews had effectively been lost.” McDermott highlights how the Solicitor General further advocated for a test that, “in determining whether a person ‘reasonably could have’ taken a particular action during a particular interval of time, it is appropriate to consider not only the options available to that person when the relevant interval commenced, but also whether the person could previously have taken preparatory steps that would have made additional options available.”
David McCombs authored an article published by Reuters about takeaways from a recent precedential opinion by the Federal Circuit, Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc.. McCombs talks about how, in this case, “the Federal Circuit concluded that Mylan did not establish obviousness because it failed to show that the prior art references were analogous to the challenged patent.” McCombs notes how “the [analogous art] test is not a complicated one, but failing to address it properly—either in the first instance or in response to an argument questioning whether prior art is analogous—carries significant consequences.”