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In Wake of In re Cellect, District Court Interprets Safe Harbor Statute and Finds Patent Not Invalid for Obviousness-Type Double...

The District Court for the District of Delaware recently held on summary judgment that a patent with 2,295 days of combined patent term adjustment (PTA) and patent term extension (PTE) was not invalid for obviousness-type...more

In the Aftermath of Amgen v. Sanofi, Federal Circuit Finds Functional Antibody Claims Invalid for Lack of Enablement

Applying the Supreme Court’s Amgen v. Sanofi decision for the first time, the Federal Circuit recently affirmed a district court decision finding claims to antibodies characterized by their ability to bind a particular...more

US Seeks Comments on Text for WIPO Genetic Resources Treaty

Summary - Last year the World Intellectual Property Organization (WIPO), under a threat of a vote, accelerated negotiations on an international legal instrument related to intellectual property (IP) and genetic resources...more

Two Product Market for Bamboo Decking Justifies Jury Award of Lost Profits

The District of Delaware recently held that evidence addressing a lack of non-infringing alternatives from the perspective of the market as a whole, as opposed to customer-by-customer, may suffice when the market includes...more

Federal Circuit: Preliminary Means Preliminary

The Federal Circuit recently held that the Patent Trial and Appeal Board (PTAB) was within its discretion to reach different conclusions in a Final Written Decision (FWD) than those provided in preliminary guidance regarding...more

The Claims as a Whole, Including ‘Conventional’ Physical Components, Must Be Considered at Step One of the Alice Test for...

On remand from the Federal Circuit following an appeal and petition for cert to the Supreme Court, the District of Delaware considered whether the claims remaining in dispute in American Axle v. Neapco were invalid for...more

Federal Circuit: Patent Term Adjustment Results in Invalidity on Obviousness-Type Double Patenting Grounds

The Federal Circuit recently affirmed a United States Patent and Trademark Office (PTO) decision to invalidate four related patents on obviousness-type double patenting grounds (OTDP), holding that any analysis of OTDP for...more

Making the Right Moves: District Court Finds Waiver on Rule 50(b) Motion Because the Patentee Raised a Different Issue in Its Rule...

The District Court for the District of Delaware recently held a patentee waived its right to seek JMOL on infringement following a jury verdict of non-infringement because the patentee’s Rule 50(a) motion focused solely on...more

Courts Must Analyze Claims as a Whole to Determine Whether Independent Claims That Lack Written Description Preclude Assertion of...

The District Court for the District of New Jersey recently denied a defendant’s motion for summary judgment which sought to invalidate a dependent claim on preclusion grounds based on the PTAB’s invalidation of the related...more

Federal Circuit: Prior Art Disclosure with Same Specificity as Patent Inherently Anticipates Claims

In a recent appeal from the PTAB, the Federal Circuit held that claims of a patent were inherently anticipated where the patent and prior art incorporated the same reference to describe a process for making the claimed...more

The EU IP Harmonization Package to Include EU-wide compulsory License

Key Points - The EU aims to harmonize patent protection rules and flexibilities with a layer on top of national rules. This is in line with long-term efforts by the EU institutions to harmonize patent rules and motivated,...more

Generic’s Conversion from Paragraph IV to Section viii Upends Subject Matter Jurisdiction on Declaratory Judgment Counterclaims

The District Court of Delaware dismissed a generic drug company’s declaratory judgment counterclaims of non-infringement and invalidity, finding that the court no longer had subject matter jurisdiction after the generic...more

A Potential ‘Once-in-a-Lifetime’ Treaty: The Pandemic Prevention, Preparedness and Response Accord Heats Up in Geneva

Key Points - The anticipated zero draft of the WHO’s Pandemic Prevention, Preparedness and Response Accord was released on February 1. This process will intertwine heavily with the renegotiations of the 2005 IHRs....more

D. Del.: Plaintiff’s Seeking Broader Construction in District Court Rather Than in Reexamination Does Not Preclude Reexamination...

In Victaulic Company v. ASC Engineered Sols., LLC, the District of Delaware ruled on summary judgment that ASC is estopped from asserting two obviousness grounds against a patent claim because it raised the same grounds...more

Witness Testimony Regarding Intent to Infringe Excluded Because Defendant Refused Such Discovery Based on Privilege

The U.S. District Court for the District of Colorado granted a motion in limine to preclude testimony from corporate executives about their “business understanding” regarding infringement because the defendant previously...more

Federal Circuit: Claim Amendments During IPR That Respond to Grounds of Unpatentability May Also Make Changes Unrelated to the IPR

In a recent decision, the Federal Circuit affirmed the PTAB’s policy of permitting claim amendments unrelated to the IPR proceedings when the amended claims also included amendments that respond to a ground of...more

Federal Circuit: New Invalidity Argument Presented to PTAB for the First Time on Remand from Appeal is Forfeit

The Federal Circuit reversed an obviousness determination from the Patent Trial and Appeal Board (PTAB) for relying on an argument raised by the petitioner for the first time on remand. In so doing, the court held that the...more

PTAB Awards Priority for CRISPR-Cas9 Systems in Eukaryotic Cells to Broad Institute, MIT and Harvard

In its latest decision in a series of interferences related to the CRISPR gene-editing system, the Patent Trial and Appeal Board (PTAB) granted priority to The Broad Institute, MIT and Harvard (collectively, “Broad”) for...more

Federal Circuit: Narrow Definition of Skill in the Art Dooms Expert’s Testimony

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held that an expert who did not possess the specific defined level of ordinary skill in the art could not testify about...more

No Enablement of a “Make and Screen” Invention Where Working Examples Do Not Represent Diversity of the Claimed Genus

Federal Circuit Judge Dyk, sitting by designation in the District of Delaware, recently granted summary judgment of no enablement for certain claims covering a genus of antibodies intended to treat blood coagulation...more

Federal Circuit Clarifies Scope of IPR Estoppel, Reversing Prior Shaw Decision

The Federal Circuit recently clarified that the scope of IPR estoppel in district courts includes prior art grounds that were raised or reasonably could have been raised in a petition for inter partes review (IPR), reversing...more

Federal Circuit: Indefiniteness Is Not Judged by the “Claim Language, Standing Alone”

Evaluating whether a patent claim is sufficiently “definite” under 35 U.S.C. § 112 requires looking beyond just the claim language itself. The Federal Circuit reaffirmed this fundamental principle in a recent decision...more

Federal Circuit Finds Written Description for a Claimed Range Not Met by Specific Examples Within the Range

In a recent decision issued in Indivior UK Limited v. Dr. Reddy’s Laboratories, the Federal Circuit affirmed a decision from the PTAB that a limitation to range of polymer weight percentages lacked written description support...more

Supreme Court Rules PTAB Decisions Subject to Discretionary Review by PTO Director, Vacating Federal Circuit Decision in Arthrex

The Supreme Court issued its decision in United States v. Arthrex, Inc., which considered whether Administrative Patent Judges’ (APJs) authority to issue decisions in inter partes reviews on behalf of the executive branch is...more

Federal Circuit Confirms That a Patent Damages Expert May Opine on a Range of Royalty Rates at Trial

In a recent decision issued in Bayer Healthcare LLC v. Baxalta Inc., the Federal Circuit held that the district court did not abuse its discretion when it allowed the jury to select from a range of proposed royalty rates...more

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