United States Federal Circuit

Plaintiff's appeal from the Board of Patent Appeals and Interferences' rejection of certain claims of plaintiff's patents, which claim methods and tools for the site-directed insertion of genes into eukaryotic chromosomes, as obvious, is: 1) dismissed as moot as to the '605 patent, because plaintiff presented only substantively amended claims to the Board and to this court, and amended claims cannot be entered now that the patent has expired; 2) reversed as to the '545 patent, where the factual findings are unsupported by substantial evidence and an erroneous obviousness analysis, including an improper discounting of plaintiff's objective indicia of non-obviousness; and 3) vacated as to the '252 patent and remanded for consideration of what motivation, if any, a skilled artisan at the relevant time would have had to pursue the claimed invention.

Appellate Information

• Decided 12/30/2013
• Published 12/30/2013

Judges

• TARANTO

Court

• United States Federal Circuit

Counsel