Osha Liang Secures Affirmance in Inter-Partes Reexamination Case from the Federal Circuit

On December 11, 2012, Osha Liang, representing the patent holder in an Inter-Partes Reexamination, secured an affirmance from the Federal Circuit that the patent at issue was valid.  Inter-Partes Reexamination is a process (now replaced by Inter-Partes Review, after the passage of the American Invents Act) by which a third party can challenge the validity of a patent that the PTO, then at the PTAB (formally known as the BPAI), and finally at the Federal Circuit.

In finding the patent valid, the Federal Circuit agreed with the PTO and Osha Liang’s position that the prior art taught away from the Requestor’s proposed modification, finding that a reference teaches away “when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.”  The Court also noted that an obviousness determination is improper where there is “little more than an invocation of the words ‘common sense’ (without any record showing that this knowledge would reside in the ordinarily skilled artisan).”

The brief and arguments were prepared by Jeff Bergman, and joining him on the brief was Aron Griffith.

To read the full appeal decision, click here.