October 24, 2016
Partners Mark Hannemann and Thomas Makin and associate Eric Lucas (all New York-Litigation) wrote an article, titled “Fed. Circ. Radically Changes the Law of Obviousness,” that was published by Law360 on October 19.
The article examines a recent Federal Circuit Court of Appeals en banc majority decision holding that obviousness is a question of fact for the jury, and therefore a jury verdict of nonobviousness must be reviewed under the deferential presumptions and standards applied to jury decisions by the regional circuit in which the district court sits. The opinion, the authors say, is not just remarkable because it contradicts almost 200 years of U.S. Supreme Court precedent, but also because no party invited the court to consider changing the law. According to the authors, “the mistake in the en banc majority opinion was not in how it applies the standards of review, but rather in the question to which it applied them.”