Secondary considerations may be presented as evidence to rebut a prima facie of obviousness over the prior art as proscribed by the Supreme Court's decision in Graham v. John Deere. These secondary considerations may include commercial success, long-felt but unmet need, and copying by competitors. An interesting discussion of secondary considerations, and specifically commercial success, is the Federal Circuit's recent decision of Merck Sharp & Dohme Corp. v. Hospira, Inc.,

Note: A version of this article appears in Law360's Expert Analysis under the title "The Limitations Of Patent Prosecution Data Analytics." A PDF of this article is also available. #Analytics #Juristat #Efficiency #Law360

In Jang v. Boston Sci. Corp., 2017 U.S. App. LEXIS 18825, the Federal Circuit revisited a decade-old controversy. The case is a good opportunity to see the mechanics behind the ensnarement doctrine and a hypothetical claim analysis. The Fed. Circuit reviewed claim 1 of U.S. Patent No. 5,922,021, which recites: 1. A stent in a non-expanded state, comprising: a first expansion strut pair including a first expansion strut positioned adjacent [*4] to a second expansion strut