The Federal Circuit recently issued an important decision further developing the role of inherency in patent law's obviousness analysis. In Cytiva Bioprocess R&D AB v. JSR Corp., the court addressed how inherent properties interact with reasonable expectation of success and claim construction, providing important guidance that builds upon its 2020 Hospira decision.
Looking ahead, Cytiva appears to strengthen the hand of patent challengers by making it easier for the PTAB to invalidate patents that claim inherent properties of otherwise obvious inventions. The Federal Circuit's framework essentially creates a streamlined path to unpatentability when properties inherent to the prior art are claimed without being essential to the objective motivation for creating the invention. While the decision attempts to carve out protection for claims where knowledge of inherent properties is necessary for motivation to combine or modify prior art, the practical effect may be to narrow the scope of patent protection available for discoveries of new properties in known compositions or processes.
The title of this blog post - A Hole in the Whole - refers to the Federal Circuit's new framework of dividing obviousness analysis into two parts: first assessing the obviousness of a base combination of some of the limitations, then separately dismissing functional limitations as inherent properties, undermining Section 103's requirement to evaluate claims 'as a whole.'"
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