Federal Circuit No Longer to Review Patent Claim Construction Entirely De Novo

Author: Jon Siderits, Associate Member, University of Cincinnati Law Review

On January 20, 2015, the Supreme Court announced its decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., and did away with the Federal Circuit’s longstanding application of a purely de novo standard when reviewing a district court’s construction of a patent claim.[1] Specifically, the Supreme Court held that the Federal Circuit must review the district court’s resolution of any subsidiary factual matters under a clear error standard of review, and only then may it resolve the ultimate legal question of claim construction de novo.[2]  Marking a significant shift in the role of the district court judge in claim construction, and realigning the appellate court’s role with the Federal Rules of Civil Procedure, the Teva decision ensures that the lower court’s construction will play a more dispositive, rather than disposable, part in patent infringement cases.

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Ohio Considers Joining the Fight Against Patent Trolls

Author: Jon Kelly, Associate Member, University of Cincinnati Law Review

Patent trolls have become a serious headache for small businesses, and states are beginning to fight them without the federal government.  The Ohio General Assembly is currently debating House Bill 573 (H.B. 573), which would allow patent holders to sue patent trolls for “bad faith” claims.[1] Although Ohio has a strong interest in preventing patent trolls from hindering small businesses’ operations, it is uncertain whether the federal government’s exclusive jurisdiction over patent law would preempt H.B. 573 and prevent state courts from accepting patent abuse cases under the law. Considering the current state of relevant case law, however, Ohio’s H.B. 573 should survive any preemption challenge because the law does not attempt to validate patents themselves, but instead sanctions the conduct of patent trolls.

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Practical Considerations for Using Evidence of Unexpected Synergistic Results in Patent Prosecution

Author: Kevin Tamm, Managing Editor, University of Cincinnati Law Review

I. Distinguishing a Patent Over the Prior Art with Unexpected Synergistic Results

The Federal Circuit and USPTO have set a high bar for an inventor to overcome a finding of obviousness in a patent application by using evidence of unexpected synergistic results.  Synergy by itself is not enough to overcome an examiner’s prima facie case for obviousness; instead, the synergy must be unexpected or surprising and the applicant must show that it could not have been predicted based upon the cited references.  Broad disclosures of synergy in the prior art weigh toward a finding of obviousness.  Additionally, evidence of synergy over a broad range of compositions or components in the prior art, or in the application at issue, weighs toward a finding of obviousness.  To show unexpected results, an applicant must provide a side-by-side comparison of the claimed invention with the closest prior art and explain why the results would have been unexpected by one of ordinary skill in the art.[1]

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