The WilmerHale Obviousness Report – A Client Alert Special Edition
- 10.18.2010
Although the following tables provide much more industry-specific detail, a number of overall statistics and other trends are worth highlighting:
- In roughly half of Life Sciences and Chemical Arts Cases (51.2%) and Computers, Software, and Electronic Arts Cases (50%), the validity of the claims was upheld on appeal, whereas in 80% of Mechanical Arts or Miscellaneous Cases, the claims were invalidated as obvious.
- Within the pharmaceutical subcategory, new chemical entity (NCE) cases were the most likely to result in a non-obviousness holding at 75%; in stark contrast, 71.4% of non-NCE pharmaceutical cases resulted in an obviousness holding.
- In 45 of 79 cases (57%), the Federal Circuit held the claim(s) at issue obvious versus 34 cases (43%) in which the court held that the claim(s) had not been proven obvious.
- Of the 79 cases, only 21 decisions (26.6%) were reversals in chief of the district court decision on obviousness, whereas 58 decisions (73.4%) were affirmances.
- Among the 21 reversals were 14 decisions (66.7%) that held the claim(s) obvious in contravention of the decision below (including each of the six instances in which the Federal Circuit reversed a jury verdict).
WilmerHale will continue to monitor developing trends in the obviousness case law and share those insights with its clients.
Life Sciences and Chemical Arts Cases
Biotechnology Cases
Case Name | Holding | Affirmance/Reversal | Subject Matter |
Applera Corp. v. Illumina, Inc., 2010 U.S. App. LEXIS 6250 (Mar. 25, 2010) | Non-obvious | Affirmed | Methods of sequencing DNA |
In re Chapman, 595 F.3d 1330 (Feb. 24, 2010) | Non-obvious | Reversed (remanded) | Divalent antibody fragments |
In re Kubin, 561 F.3d 1351 (Apr. 3, 2009) | Obvious | Affirmed | DNA molecules encoding NAIL protein |
Amgen Inc. v. F. Hoffmann-La Roche, Ltd., 580 F.3d 1340 (Sept. 15, 2009) | Non-obvious | Affirmed | EPO production using recombinant DNA |
Ecolab, Inc. v. FMC Corp., 569 F.3d 1335 (June 9, 2009) | Obvious | Reversed | Use of paracetic acid as sanitizer in beef and poultry |
In re DBC, 545 F.3d 1373 (Nov. 3, 2008) | Obvious | Affirmed | Neutriceutical compositions comprising rind of the mangosteen fruit |
In re Swanson, 540 F.3d 1368 (Sept. 4, 2008) | Obvious | Affirmed | Method for analysis of analytes |
Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342 (July 9, 2007) | Obvious (2-1) | Reversed | Compositions and methods for treating persons with compromised blood and immune systems with hematopoietic stem cells |
5 Holdings of Obviousness (62.5%) 5 Affirmances (62.5%) | |||
Medical Device Cases
Case Name | Holding | Affirmance/Reversal | Subject Matter |
Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 2010 U.S. App. LEXIS 18818 (Fed. Cir. Sept. 9, 2010) | Non-obvious | Affirmed | Intervertebral implants |
Trimed, Inc. v. Stryker Corp., 608 F.3d 1333 (June 9, 2010) | Non-obvious | Reversed (remanded) | Implantable device to set bone fractures |
Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357 (Apr. 1, 2010) | Non-obvious | Affirmed | Hearing aid components |
Pressure Prods. Med. Supplies v. Greatbatch Ltd., 599 F.3d 1308 (Mar. 24, 2010) | Non-obvious | Affirmed | Introducer for catheters |
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1289 (Jan. 25, 2010), reh'g en banc granted (Apr. 26, 2010) | Obvious | Affirmed | Glucose measuring device for diabetics |
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325 (Jan. 25, 2010) | Obvious | Affirmed | Glucose measuring device for diabetics |
Smith & Nephew, Inc. v. Arthrex, Inc., 355 Fed. Appx. 384 (Dec. 2, 2009) | Non-obvious | Affirmed | Method of placing and securing a suture anchor in bone |
Fresenius USA, Inc. v. Baxter Int'l, Inc., 582 F.3d 1288 (Sept. 10, 2009) | Obvious | Reversed | Hemodialysis machine with touchscreen interface |
Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319 (Mar. 31, 2009) | Non-obvious | Affirmed | Intravascular stents |
Kinetic Concepts, Inc. v. Blue Sky Med. Group, Inc., 554 F.3d 1010 (Feb. 2, 2009) | Non-obvious (2-1) | Affirmed | Reduced/negative pressure for wound healing |
Boston Scientific Scimed, Inc. v. Cordis, Corp., 554 F.3d 982 (Jan. 15, 2009) | Obvious | Reversed | Intravascular stents |
Lexion Med., LLC v. Northgate Techs., Inc., 292 Fed. Appx. 42 (Aug. 28, 2008) | Obvious | Affirmed | Method/apparatus for heating and humidifying gas used to inflate abdomen during laparoscopic surgery |
Voda v. Cordis Corp., 536 F.3d 1311 (Aug. 18, 2008) | Non-obvious | Affirmed | Catheters |
Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307 (Aug. 24, 2007) | Obvious | Affirmed | Computer-aided design and manufacture of custom orthodontic appliances |
6 Holdings of Obviousness (42.9%) 11 Affirmances (78.6%) | |||
Pharmaceutical Cases
Case Name | Holding | Affirmance/Reversal | Subject Matter |
Daiichi Sankyo Co., Ltd. v. Matrix Labs., Ltd., 2010 U.S. App. LEXIS 18820 (Fed. Cir. Sept. 9, 2010) | Non-obvious | Affirmed | Olmesartan medoxomil (Benicar®, Benicar HCT®, and Azor®) |
Eli Lilly & Co. v. Teva Pharms. USA, Inc., 2010 U.S. App. LEXIS 18236 (Fed. Cir. Sept. 1, 2010) | Non-obvious | Affirmed | Raloxifene (Evista®) |
King Pharms., Inc. v. Eon Labs., Inc., 2010 U.S. App. LEXIS 15947 (Aug. 2, 2010) | Obvious | Affirmed | Methods of administration of metaxalone (Skelaxin®) |
Sun Pharm. Indus. v. Eli Lilly & Co., 2010 U.S. App. LEXIS 15552 (July 28, 2010) | Obvious | Affirmed | Method of using gemcitabine (Gemzar®) for treating cancer |
Purdue Pharma Prods. L.P. v. Par Pharm., Inc., 2010 U.S. App. LEXIS 11246 (June 3, 2010) | Obvious | Affirmed | Controlled-release tramadol formations for daily dosing (Ultram® ER) |
Boehringer Ingelheim Int'l GmbH v. Barr Labs., Inc., 2010 U.S. App. LEXIS 1624 (Jan. 25, 2010), reh'g en banc denied (May 7, 2010) | Non-obvious (2-1) | Reversed | Pramipexole (Mirapex®) |
Ortho-Mcneil Pharm, Inc. v. Teva Pharms. Indus., Ltd., 344 Fed. Appx. 595 (Aug. 26, 2009) | Obvious | Affirmed | Combination tramadol and acetaminophen (Ultracet®) |
Bayer Schering Pharma AG v. Barr Labs., Inc., 575 F.3d 1341 (Aug. 5, 2009) | Obvious (2-1) | Affirmed | Drospirenone formulation for oral contraception (Yasmin®) |
Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989 (May 13, 2009) | Non-obvious | Affirmed | Risedronate (Actonel®) |
Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Dec. 12, 2008) | Non-obvious | Affirmed | Clopidogrel (Plavix®) – racemate separation |
In re Omeprazole Patent Litig. v. Apotex Corp., 536 F.3d 1361 (Aug. 20, 2008) | Non-obvious | Affirmed | Omeprazole (Prilosec®) |
Eisai Co. Ltd. v. Dr. Reddy's Labs., Ltd, 533 F.3d 1353 (July 21, 2008) | Non-obvious | Affirmed | Rabeprazole (Aciphex®) |
Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254 (July 11, 2008) | Obvious | Reversed | Method for treating bacterial ear infections with ofloxacin (Floxin®) |
Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358 (Mar. 31, 2008) | Non-obvious | Affirmed | Topiramate (Topamax®) |
Pfizer, Inc. v. Teva Pharms. USA, Inc., 518 F.3d 1353 (Mar. 7, 2008) | Obvious | Reversed | Celecoxib (Celebrex®) |
Aventis Pharma Deutschland GmbH v. Lupin, Ltd., 499 F.3d 1293 (Sept. 11, 2007) | Obvious | Reversed | Ramipril free of other isomers (Altace®) |
Forest Labs., Inc. v. Ivax Pharms., Inc., 501 F.3d 1263 (Sept. 5, 2007) | Non-obvious | Affirmed | (+)-enantiomer of citalopram (Celexa®) |
Metoprolol Succinate Patent Litig. v. KV Pharm. Co., 494 F.3d 1011 (July 23, 2007) | Obvious (2-1) | Affirmed | Metoprolol succinate (Toprol-XL®) |
Takeda Chem. Indus. v. Alphapharm Pty., Ltd., 492 F.3d 1350 (June 28, 2007) | Non-obvious | Affirmed | Pioglitazone (Actos®) |
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Chemical Arts (Non-Pharmaceutical) Cases
Case Name | Holding | Affirmance/Reversal | Subject Matter |
Sud-Chemie, Inc. v. Multisorb Techs., 554 F.3d 1001 (Jan. 30, 2009) | Non-obvious | Reversed | Desiccant containers |
In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371 (Nov. 13, 2008) | Obvious | Affirmed | Method for copolymerizing unsaturated hydrocarbons |
All Biological/Biomedical/Chemical Arts 22 Holdings of Non-obviousness (51.2%) 11 Reversals (25.6%, 7 holding obvious) 21 Holdings of Obviousness (48.8%) 32 Affirmances (74.4%) |
Computers, Software, and Electronic Arts Cases
Computer/Software/Internet Cases
Case Name | Holding | Affirmance/Reversal | Subject Matter |
Dow Jones & Co. v. Ablaise Ltd., 606 F.3d 1338 (May 28, 2010) | Obvious | Affirmed | Customized web pages based on signal info |
Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325 (Apr. 16, 2010) | Obvious | Affirmed | Packet-switched telephony |
i4i L.P. v. Microsoft Corp., 598 F.3d 831 (Mar. 10, 2010), reh'g en banc denied (Apr. 1, 2010) | Non-obvious | Affirmed | Method of editing custom computer language |
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Dec. 2, 2009) | Obvious | Affirmed | E-mail methods |
Lucent Techs. v. Gateway, Inc., 580 F.3d 1301 (Sept. 11, 2009) | Non-obvious | Affirmed | Method of entering information without using keyboard |
z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340 (Nov. 16, 2007) | Non-obvious | Affirmed | Antipiracy software |
Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295 (Sept. 26, 2007) | Non-obvious | Affirmed | Telephony-related methods |
3 Holdings of Obviousness (42.9%) 7 Affirmances (100%) | |||
Electronic Arts Cases
Case Name | Holding | Affirmance/Reversal | Subject Matter |
Vizio, Inc. v. ITC, 605 F.3d 1330 (May 26, 2010) | Non-obvious | Affirmed | Digital television technology/MPEG |
Honeywell Int'l, Inc. v. United States, 609 F.3d 1292 (May 25, 2010) | Non-obvious | Reversed | Passive night vision goggles/optics |
Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343 (Mar. 30, 2010) | Non-obvious | Affirmed | Point-of-load power regulators |
Siemens AG v. Seagate Tech., 369 Fed. Appx. 118 (Mar. 9, 2010) | Obvious | Affirmed | Magnetoresistive sensors |
Monolithic Power Sys. v. O2 Micro Int'l Ltd., 558 F.3d 1341 (Mar. 5, 2009) | Obvious | Affirmed | Power inverter circuitry for laptop computers |
Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310 (Oct. 10, 2008) | Obvious | Affirmed | System for tracking articles |
Scanner Techs. Corp. v. Icos Vision Sys. Corp. N.V., 528 F.3d 1365 (June 19, 2008) | Obvious | Affirmed | Processes to inspect electronic components |
Black & Decker, Inc. v. Robert Bosch Tool Corp., 260 Fed. Appx. 284 (Jan. 7, 2008) | Non-obvious | Affirmed | Combination of a radio and a battery charger |
In re Translogic Tech., Inc., 504 F.3d 1249 (Oct. 12, 2007) | Obvious | Affirmed | Multiplexers |
5 Holdings of Obviousness (55.6%) 8 Affirmances (88.9%) | |||
All Computer/Software/Internet/Electronic Arts 8 Holdings of Non-obviousness (50%) 1 Reversal (6.3%) 8 Holdings of Obviousness (50%) 15 Affirmances (93.6%) |
Mechanical Arts and Miscellaneous Cases
Mechanical Arts Cases
Case Name | Holding | Affirmance/Reversal | Subject Matter |
Lucky Litter LLC v. ITC, 2010 U.S. App. LEXIS 20621 (Fed. Cir. Oct. 6, 2010) | Obvious | Reversed | Self-cleaning cat litter box |
Geo M. Martin Co. v. Alliance Mach. Sys. Int'l LLC, 2010 U.S. App. LEXIS 17377 (Fed. Cir. Aug. 20, 2010) | Obvious | Affirmed | Bundle breaker with compliance structures |
Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contrs. USA, Inc., 2010 U.S. App. LEXIS 17181 (Aug. 18, 2010) | Non-obvious | Reversed (remanded) | Apparatus for conducting offshore drilling |
Wyers v. Master Lock Co., 2010 U.S. App. LEXIS 15271 (July 22, 2010) | Obvious | Reversed | Hitch pin locks to secure trailers to automobiles |
Rolls-Royce, PLC v. United Techs. Corp., 603 F.3d 1325 (May 5, 2010) | Non-obvious | Affirmed | Swept fan blades for turbofan jet engine |
B-K Lighting, Inc. v. Fresno Valves & Castings, Inc., 2010 U.S. App. LEXIS 8770 (Apr. 28, 2010) | Obvious | Affirmed | Adjustable mount for sealed light fixtures |
Alloc, Inc. v. Pergo, Inc., 366 Fed. Appx. 173 (Feb. 18, 2010) | Obvious | Affirmed | Mechanical joints for flooring panels |
Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371 (July 20, 2009) | Non-obvious | Affirmed | Refrigerator shelves |
Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356 (Dec. 24, 2008) | Obvious | Reversed | Retractable segmented covering systems |
In re Icon Health & Fitness, Inc., 496 F.3d 1374 (Aug. 1, 2007) | Obvious | Affirmed | Treadmill with folding base |
Frazier v. Layne Christensen Co., 239 Fed. Appx. 604 (June 29, 2007) | Obvious | Affirmed | Method for improved water well production |
8 Holdings of Obviousness (72.7%) 7 Affirmances (63.6%) | |||
Miscellaneous Cases
Case Name | Holding | Affirmance/Reversal | Subject Matter |
Media Techs. Licensing, LLC v. Upper Deck Co., 596 F.3d 1334 (Mar. 1, 2010) | Obvious (2-1) | Affirmed | Sports memorabilia card |
Crocs, Inc. v. ITC, 598 F.3d 1294 (Feb. 24, 2010) | Non-obvious | Reversed | Breathable footwear pieces |
Ritchie v. Vast Res., Inc., 563 F.3d 1334 (Apr. 24, 2009) | Obvious | Reversed | Borosilicate rods |
Rothman v. Target Corp., 556 F.3d 1310 (Feb. 13, 2009) | Obvious | Affirmed | Nursing garment with invisible breast support for nursing mothers |
Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984 (Feb. 9, 2009) | Obvious | Reversed | Candles |
Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349 (Aug. 21, 2008) | Obvious | Affirmed | Method and apparatus for printing ink on a rigid, deformable substrate |
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (July 14, 2008) | Obvious | Reversed | Electronic (business) methods for conducting original issuer auctions of financial instruments |
Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337 (Mar. 28, 2008) | Obvious | Reversed | Method and apparatus for electrocuting pests |
In re Trans Tex. Holdings Corp., 498 F.3d 1290 (Aug. 22, 2007) | Obvious | Affirmed | System of inflation-adjusted deposit and loan accounts |
8 Holdings of Obviousness (88.9%) 4 Affirmances (44.4%) | |||
All Mechanical Arts and Miscellaneous Cases 4 Holdings of Non-obviousness (20%) 9 Reversals (56.3%, 7 holding obvious) 16 Holdings of Obviousness (80%) 7 Affirmances (43.7%) |
