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Ordinary Meaning: “Identifying” Doesn’t Mean Detecting; It Means Identifying

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s decisions finding one set of challenged claims patentable and another set of challenged claims in the same patent unpatentable. The...more

Hold That Generic, Please: Supreme Court Grants Emergency Request to Stay Federal Circuit’s Mandate

In a rare action by the Supreme Court of the United States, Chief Justice Roberts granted Novartis’s emergency request for a stay of a mandate from the US Court of Appeals for the Federal Circuit, which had found a Novartis...more

Heightened Written Description Standard for Negative Limitations?

Addressing the issue of negative claim limitations, the US Court of Appeals for the Federal Circuit granted a petition for panel rehearing, vacated its prior decision (authored by now-retired Judge O’Malley) and reversed the...more

Silence May Be Sufficient Written Description Disclosure for Negative Limitation

Addressing the issue of written description in a Hatch-Waxman litigation, the US Court of Appeals for the Federal Circuit affirmed the district court’s finding that the patent adequately described the claimed daily dose and...more

Obvious to Try Requires Reasonable Expectation of Success Tethered to Claimed Invention

Addressing obviousness in the context of method of treatment claims using particular drug dosages, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) final written decision holding...more

Another Genus Claim Bites the Dust for Lack of Written Description

Addressing the issue of written description in the context of antibody-related genus claims, the US Court of Appeals for the Federal Circuit reversed a $1.2 billion jury verdict and found genus claims using functional...more

Government Contractors May Include Restrictive Markings on ‘Unlimited Rights’ Data

The US Court of Appeals for the Federal Circuit reversed an Armed Services Board of Contract Appeals (ASBCA) denial of summary judgment and held that a federal contractor may include certain restrictive markings on “unlimited...more

“Method of Preparation” Claims Still Patent Eligible Under § 101 in Modified Opinion

The US Court of Appeals for the Federal Circuit denied an accused infringer’s petition for rehearing en banc and issued a modified opinion with additional analysis maintaining its prior finding that patent claims directed to...more

Glass Half Empty: Patent Reciting “Half Liquid” Is Indefinite

The US Court of Appeals for the Federal Circuit affirmed the district court’s finding that the asserted patent claims were invalid as indefinite because the meaning of the term “half-liquid” was not reasonably clear from the...more

“Non-Limiting” Prior Art Claims Support Obviousness After Standing Is Established

Addressing the issue of Article III standing and obviousness in an appeal of an inter partes review (IPR) decision, the US Court of Appeals for the Federal Circuit found that the petitioner had standing to appeal because past...more

Article III Standing Required to Appeal Final Decisions by the PTAB

Addressing the issue of Article III standing in an appeal of an inter partes review (IPR) decision, the US Court of Appeals for the Federal Circuit dismissed the appeal because the party appealing failed to establish an...more

Prima Facie Obviousness Established Where Claimed pH Range Overlaps with Prior Art Range for Similar Compounds

The US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment that found a patent was not obvious because the claimed pH range would not have been obvious-to-try despite overlapping ranges...more

Retroactive Application of IPRs to Pre-AIA Patents is not Unconstitutional Taking

The US Court of Appeals for the Federal Circuit addressed for the first time whether the retroactive application of inter partes review (IPR) proceedings to pre-America Invents Act (AIA) patents is an unconstitutional taking...more

“Exceptional Case” Determinations May Rest on Alleged but Non-Litigated Issues

Addressing the issue of attorneys’ fees in connection with exceptional cases under 35 USC § 285, the US Court of Appeals for the Federal Circuit affirmed the district court’s determination that a case was exceptional based on...more

Obviousness Take Two

Finding that the district court improperly restricted a defendant’s ability to present the jury with relevant evidence of invalidity after a prior remand, the US Court of Appeals for the Federal Circuit vacated a district...more

Discussion of Read Factors Not Mandatory for Enhanced Damages Determination

The US Court of Appeals for the Federal Circuit affirmed in part, reversed in part, vacated in part and remanded the district court’s findings of definiteness, grant of absolute intervening rights, denial of enhanced damages,...more

Factual Findings Required to Show “Apparent Reason to Combine”

Addressing issues of obviousness and anticipation in the context of an inter partes review, the US Court of Appeals for the Federal Circuit issued two decisions with respect to the same patent, vacating and remanding the...more

Hard to Reverse Adverse PTAB Rulings Under Substantial Evidence Standard

Over a vigorous dissent, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB or Board) decision affirming rejection of all pending claims of a patent as being obvious, as supported...more

No Rehearing on Dual Use PTAB Panels

Confirming that the same panel of judges at the Patent Trial and Appeal Board (PTAB or Board) has the authority to institute America Invents Act (AIA) reviews and make a final determination on the merits, the US Court of...more

No Deference by the Federal Circuit to Lower Courts’ Claim Construction Findings - Kaneka Corp. v. Xiamen Kingdomway Grp.; TomTom,...

Addressing issues of claim construction, the U.S. Court of Appeals for the Federal Circuit recently reversed the decisions of two district courts, shedding some light on the impact of the Teva decision on its claim...more

Post-Therasense: Federal Circuit Divided on Inequitable Conduct

Am. Calcar, Inc. v. Am. Honda Motor Co., Inc. - In a post-Therasense decision, addressing the issue of inequitable conduct the U.S. Court of Appeals for the Federal Circuit upheld a district court’s finding that the...more

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