by Dennis Crouch
Incept LLC v. Palette Life Sciences, Inc., No. 21-2063 (Fed. Cir. Aug. 16, 2023) (Majority by Judges Schall and Taranto; Dissent-in-part by Judge Newman)
The most interesting line in the case for appellate attorneys (and legal scholars) is probably the court's law/fact distinction in the context of obviousness analysis. The majority wrote: "We see no reversible error ... whether viewed as a factual one about the level of [commercial] success or a legal one about the weight of any such success in the overall obviousness analysis." The law/fact divide is important because of the evidentiary requirements in the first instance and the standard for review on appeal. Here, the court makes clear that the weight given to any objective indicia of non-obviousness is a question of law rather than a question of fact. The result then is that its analysis can generally be based upon reason rather than evidence, and that issue is one that will be heard de novo on appeal.
To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.