Intellectual Property Law

Pre-KSR obviousness instruction does not result in plain error post-KSR

By McKee, Voorhees & Sease, P.L.C.

In a decision this week, the Federal Circuit affirmed findings of infringement of two patents by two defendants.  The court also reversed an invalidity ruling of one of one claim that had been the subject of reexamination, but remanded the case to the district court for a determination of the obviousness of one claim based on a revised claim construction and for a determination of damages.

While the case went to the jury pre-KSR, the court held that the district court's jury instructions on obviousness, which focused on the teaching-suggestion-motivation test, including that a motivation to combine references may be found in the nature of the problem to be solved, did not warrant reversal.  This indicates that the effect of KSR on the obviousness analysis may not be as dramatic as some have predicted, at least outside the USPTO.

In addition, the court held that the requirements in 35 U.S.C. § 305 regarding new claims in reexamination proceedings need not be specifically noted by the applicant when adding new claims.  Instead, the court confirmed that the limit on new and amended claims in reexamination is that they may not enlarge the scope of the original claims.

More detail of Cordis Corp. v. Medtronic AVE, Inc. after the jump.

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Full post as published by FileWrapper on January 10, 2008 (boomark / email).