Comments for Patently-O

Comment on When Obviousness Rejections Pile On: Rethinking Multi-Reference Combinations by znutar

znutar — Fri, 06 Feb 2026 04:30:18 +0000

Have any case law that supports your assertion of a need to show a conjunction of motivations?

Comment on Patent Suit Over NASA’s Mars Helicopter Blocked by Government Contractor Immunity by paulf

paulf — Thu, 05 Feb 2026 19:18:20 +0000

As a former JAG procurement officer, and also with some experience with a Defense Department contractor, it amazes me how many times over the years since I have seen decisions in which attorneys have wasted their client’s money trying to sue a Defense Department contractor for patent infringement in violation of 28 U.S.C. § 1498. They ought to be sanctioned. Especially for still proceeding after that defense is affirmatively plead.

Comment on The ‘Narrow’ Question That Appears in Half of PTAB Obviousness Decisions by paulf

paulf — Thu, 05 Feb 2026 14:29:09 +0000

Indeed, re the false briefing re the alleged non-importance of the prior art [and prior invention] of a published application being prior art as of its filing date.
However, on the merits, there is no statutory, prior-practice, or logical prior art difference whether a published application also gets published a second time later as a patent or not. Nor would it help international patent law uniformity. With the opposition to cert of the Solicitor that should end that novel argument.

Comment on When Obviousness Rejections Pile On: Rethinking Multi-Reference Combinations by paulf

paulf — Wed, 04 Feb 2026 18:02:27 +0000

In reply to paulf. If an academic would wonder why patent attorneys would do that in patent claims: One reason is hoping that such a piled-on-parts claim would increase the royalty "base" for licensing or other recovery. Another is for the well know to many PTO practioners "span test." An unwritten but credible belief that a claim that is made longer than that [without really being more limited] is more likely to get allowed by an examiner than a bare bones short claim just on the novel element.

Comment on When Obviousness Rejections Pile On: Rethinking Multi-Reference Combinations by paulf

paulf — Wed, 04 Feb 2026 17:18:05 +0000

Re: “The John Goodhue, Rethinking In Re Gorman: Why the Number of References Does Matter in Obviousness Determinations Under 35 U.S.C. § 103 (Working Paper, 2026). Goodhue’s diagnosis: when an examiner assembles numerous disparate references to arrive at a claimed invention, this strongly suggests hindsight reconstruction..”
The important falacy in such an automatic legal presumption is a false presumption that all patent claims consist of all-unobvious-combinations of elements. When, in reality, many claims contain lists of well known AND well-know-to-be-combined elements. Like the famous examples of a patented car part where the claims are not limited to that part and also list a number of other well known car parts which that new part is normally combined with.

Comment on Find the Differences vs Substantial Similarity: Chief Judge Moore Challenges Federal Circuit’s Design Patent Infringement Framework by paulf

paulf — Tue, 03 Feb 2026 16:58:39 +0000

In reply to paulf. P.S. However, the design patent infringement test issue should not be confused with some of the other comments by CAFC judges noted above which strike me as design patent 103 obviousness arguments. [Another whole major issue only recently being properly addressed by the CAFC.]

Comment on Find the Differences vs Substantial Similarity: Chief Judge Moore Challenges Federal Circuit’s Design Patent Infringement Framework by paulf

paulf — Tue, 03 Feb 2026 16:43:12 +0000

Re: this CAFC decision in Range of Motion Products, LLC v. Armaid Company Inc., Feb. 2, 2026, affirming summary judgment of non-infringement in a design patent suit.
Yes, the dissents re the heretofore sacrosanct Egyptian Goddess lower and laypersons infringement test for design patents are interesting. But actually getting SJ here by the judge by Judicial claim scope analysis [as the Sup. Ct. Markman case intends] is even better. I.e., not letting “ordinary observer” lay juries unrestrainedly deciding design patent claim scope irrespective of numerous differences between the patent drawing claim and the allegedly infringed product.

The test term “plainly dissimilar” even seems to me to inherently imply to a lay juror that the defendant has to prove non-infringement?

Comment on Large Entities Achieve Double the Patent Allowance Rate of Micro Entities by IPqualitypro@gmail.com

IPqualitypro@gmail.com — Sun, 01 Feb 2026 21:07:11 +0000

In reply to kdamman. Yes, there was a sense inside the USPTO that it takes a patent to get more patents...

Comment on Large Entities Achieve Double the Patent Allowance Rate of Micro Entities by Dennis Crouch

Dennis Crouch — Sun, 01 Feb 2026 19:44:26 +0000

In reply to kdamman. Thanks for this.

Comment on Supreme Court IP Docket February 1, 2026: Hikma Leads, Section 101 and IPR Questions on Deck by paulf

paulf — Sun, 01 Feb 2026 19:40:21 +0000

It seems likely that the reason the one and only patent case of Hikma v. Amarin [re skinny labels] was granted certiorari was not primarily for either the doctrine of patent inducement or Hatch Waxman. Rather, the much hotter topic of U.S. drug prices, which it presumably fairly directly impacts.