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Implicit Motivation To Combine Sufficient To Show Obviousness

Client Alert | 1 min read | 10.25.06

In Dystar v. Patrick Co., (No. 06-1088; October 3, 2006), a Federal Circuit panel reverses a district court's denial of the accused infringer's motion for judgment as a matter of law (JMOL) that the patent in suit was invalid based on obviousness. Importantly, with respect to the claimed "process for dyeing textile materials with catalytically hydrogenated leuco indigo," the Federal Circuit determines that substantial evidence does not support a finding that a person of ordinary skill would be a dyer lacking chemistry knowledge, as opposed to a dyeing-process designer having such knowledge. Accordingly, the jury's apparent decision to disregard certain prior art references (based on an incorrect determination of the level of ordinary skill in the art) was unsupported by substantial evidence.

The panel then explores the caselaw addressing obviousness and notes that “obviousness is a complicated subject requiring sophisticated analysis.” In particular, the court points out that an explicit suggestion to combine in the references is not required. Rather, an implicit motivation to combine may be sufficient, even where there is no "hint of suggestion in the references themselves." Based on well-established law, "common knowledge and common sense" can be sufficient to establish a motivation to combine. Moreover, a suggestion to combine may be "gleaned" from the fact that a combination of references is "desirable" because, for example, it is "stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient." Here, the court recognizes that the patent at issue claimed a new, more efficient way of performing a known function, but nevertheless concludes that the asserted innovation is merely “exploitation” of the well-known principle of vacuum packaging. This is the work of a skilled chemist, and not an inventor, says the Court. As a result, the Court finds the claims invalid as obvious over a combination of references.

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Client Alert | 6 min read | 03.26.24

California Office of Health Care Affordability Notice Requirement for Material Change Transactions Closing on or After April 1, 2024

Starting next week, on April 1st, health care entities in California closing “material change transactions” will be required to notify California’s new Office of Health Care Affordability (“OHCA”) and potentially undergo an extensive review process prior to closing. The new review process will impact a broad range of providers, payers, delivery systems, and pharmacy benefit managers with either a current California footprint or a plan to expand into the California market. While health care service plans in California are already subject to an extensive transaction approval process by the Department of Managed Health Care, other health care entities in California have not been required to file notices of transactions historically, and so the notice requirement will have a significant impact on how health care entities need to structure and close deals in California, and the timing on which closing is permitted to occur....