Ex Parte Sayana et al

9 Cited authorities

Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc.
773 F.3d 1186 (Fed. Cir. 2014) Cited 140 times 25 Legal Analyses
Concluding that "[t]he claimed . . . parameters . . . [were] inherent properties of the obvious . . . formulation," and thus "[t]he reduced food effect was an inherent result of [a composition] even if it was previously not known in the prior art that a food effect existed"
In re Kubin
561 F.3d 1351 (Fed. Cir. 2009) Cited 134 times 10 Legal Analyses
Finding patent invalid where an inherent benefit "is not an additional requirement imposed by the claims . . . but rather a property necessarily present" when the other limitations are satisfied
In re Huai-Hung Kao
639 F.3d 1057 (Fed. Cir. 2011) Cited 88 times 16 Legal Analyses
Holding that a "food effect" was obvious because the effect was an inherent property of the composition
Santarus, Inc. v. Par Pharm., Inc.
694 F.3d 1344 (Fed. Cir. 2012) Cited 68 times 15 Legal Analyses
Finding that "[d]ue to breaks in the chain of priority," the "[parent] patent [was] prior art for some of the asserted claims"
Alcon Research, Ltd. v. Apotex Inc.
687 F.3d 1362 (Fed. Cir. 2012) Cited 60 times 6 Legal Analyses
Holding a prior art reference disclosing a range of concentrations expressly disclosed a particular concentration within that range
In re Oelrich
666 F.2d 578 (C.C.P.A. 1981) Cited 92 times 5 Legal Analyses
Stating that "[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient" to establish inherency (quoting Hansgirg v. Kemmer , 102 F.2d 212, 214 (C.C.P.A. 1939) )
In re Napier
55 F.3d 610 (Fed. Cir. 1995) Cited 37 times
Determining proper standard of review is unnecessary because board's fact finding could be affirmed under more stringent standard
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,130 times 479 Legal Analyses
Holding the party seeking invalidity must prove "the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains."
Section 6 - Patent Trial and Appeal Board
35 U.S.C. § 6 Cited 186 times 63 Legal Analyses
Giving the Director authority to designate "at least 3 members of the Patent Trial and Appeal Board" to review "[e]ach appeal, derivation proceeding, post-grant review, and inter partes review"

Ex Parte Sayana et al

9 Cited authorities

Concluding that "[t]he claimed . . . parameters . . . [were] inherent properties of the obvious . . . formulation," and thus "[t]he reduced food effect was an inherent result of [a composition] even if it was previously not known in the prior art that a food effect existed"

Finding patent invalid where an inherent benefit "is not an additional requirement imposed by the claims . . . but rather a property necessarily present" when the other limitations are satisfied

Holding that a "food effect" was obvious because the effect was an inherent property of the composition

Finding that "[d]ue to breaks in the chain of priority," the "[parent] patent [was] prior art for some of the asserted claims"

Holding a prior art reference disclosing a range of concentrations expressly disclosed a particular concentration within that range

Stating that "[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient" to establish inherency (quoting Hansgirg v. Kemmer , 102 F.2d 212, 214 (C.C.P.A. 1939) )

Determining proper standard of review is unnecessary because board's fact finding could be affirmed under more stringent standard

Giving the Director authority to designate "at least 3 members of the Patent Trial and Appeal Board" to review "[e]ach appeal, derivation proceeding, post-grant review, and inter partes review"