Recent Fed. Circ. Decision May Make Patent Prosecution Harder, Write Sean Murray and Jeremiah Helm in Law360
In the latest installment of Knobbe Martens’ Law360 series on noteworthy Federal Circuit opinions, partners Sean Murray and Jeremiah Helm discuss the recent decision in Elekta Limited v. ZAP Surgical Systems Inc. that illustrates the breadth of evidence that may be used to prove obviousness.
Murray and Helm examine the case, which focused on a medical device patent. “The court ruled that evidence of the baseline knowledge in the field could both provide a motivation to combine prior art references and rebut the patent owner's argument that the prior art teaches away from the combination,” write the authors. “Notably, the court also held that the patent owner's failure to distinguish prior art during prosecution could be evidence that the prior art did not teach away from the proposed combination of references.”
In their analysis, Murray and Helm maintain that the court’s ruling could have lasting impact on how patent applications are prosecuted in the U.S. “Patent attorneys will now need to consider whether to argue that cited patents are nonanalogous, even if the attorney has a bulletproof argument that the proposed combination is missing a claim limitation, or that a skilled artisan would have had no reason to combine the references.”