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« Court Report | Main | USPTO Will Remain Open . . . for Now »

September 30, 2013


"the Federal Circuit could not be sending a clearer message to all judiciary involved in invalidity determinations. Objective evidence of non-obviousness is not an optional component of the obviousness inquiry -- it is absolutely required and must be given its full consideration and weight."

The "judiciary" may also want to keep in mind that not every company has a budget like Rambus' budget. Rambus has spent an extraordinary amount of money on these claims and the likelihood of valid claims emerging does not appear particularly high. The Board made a better argument than the Examiner without giving Rambus a chance to respond? That's unfortunate. On the other hand, for many applicants that better argument might have represented a favor to them. In many cases, that "new" argument is an argument the applicant is well aware of and has likely been discussed with the attorney as one that will be presented by defendants should the patent be granted and asserted. In many cases, the attorney will have recommended that the appeal not be filed as pursuing the claims is a waste of time because of the argument that the Examiner did not originally raise but which might be raised later.

As for the Federal Circuit's "reasonable commensurate" argument, it appears that they blew that one. If the commercial success relied on for non-obviousness is plainly due to one embodiment and not others falling within the scope of the claim, then the non-obvious claims must be limited to that one embodiment. The broader claims should not be shoe-horned in. Any other intepretation of this rule turns the "commercial success" consideration into an even bigger joke than it already is.

I've got to agree with Josh Klein on his third paragraph. Though I don't think that was what was at issue in this case, I think the board actually messed up because the features providing the commercial success where reasonably represented in the claims.

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