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Validity Analysis

Validity Analysis. Validity breakdown ‘168 patent as example Novoste strategy Obviousness argument ‘168 obviousness analysis Value of uncited art. Validity Breakdown. Does putative prior art satisfy all or some of claim elements? Is the putative prior art 102 art?

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Validity Analysis

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  1. Validity Analysis • Validity breakdown • ‘168 patent as example • Novoste strategy • Obviousness argument • ‘168 obviousness analysis • Value of uncited art

  2. Validity Breakdown • Does putative prior art satisfy all or some of claim elements? • Is the putative prior art 102 art? • If not anticipatory, does the prior art make any claims obvious

  3. ‘168 Patent As an Example • Neither Fischell nor Dake prima facie 102 art • Fischell and Dake anticipatory of claim 1 • Because of their closeness, we look for a way to establish that they are 102 art

  4. Novoste Strategy • If Novoste, you need to push back Fischell and Dake DOI’s, or push forward Hess’s DOI • Hess DOI can be pushed forward in 3 ways • Attack date of conception • Attack diligence • Attack his DOI based on lack of corroboration • Fischell/Dake can be pushed back in several ways • Earlier public disclosures by Fischell or Dake – 102(a) • Evidence of prior DOI by Fischell or Dake – 102(g)(2)

  5. Obviousness Argument As Backup • If neither of above approaches succeed, resort to obviousness argument • Which art can we use? • Friedman, Liprie, Bonzel because all are prior art • Why focus on these rather than Fischell and Liprie, which are closer to the claims? • Fischell and Liprie not prior art absent further information

  6. ‘168 Obviousness Analysis • Bonzel discloses balloon angioplasty • Friedman discloses stenosis result of proliferation of SMCs caused by irritation • Based on Friedman, POSA would expect that balloon angioplasty could result in restenosis • Friedman discloses use of catheter and radioactive wire • POSA would be motivated to use Friedman following angioplasty because he demonstrated that radiation inhibits SMC growth • It would have been obvious to try Bonzel and then Friedman to prevent restenosis • Given Friedman’s results with rabbits, there would have been a reasonable expectation of success

  7. Value of Uncited Art • Uncited art is better than cited art • Presumption of validity • Issued patent entitle to presumption • If Examiner cited a reference, not close enough to prevent allowance • If not close enough to prevent patent, not close enough to invalidate patent • Exception where applicant swears behind • Because difficult to second-guess PTO, you want to use uncited art

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