News & Analysis as of

Obviousness Life Sciences Appeals

MoFo Life Sciences

Is Your Claim Open or Closed? Claim Construction Takes on a New Meaning in Eye Therapies, LLC v. Slayback Pharma, LLC

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On June 30, 2025, the Federal Circuit issued a precedential decision in Eye Therapies, LLC v. Slayback Pharma, LLC, reversing the Patent Trial and Appeal Board’s (PTAB’s) claim construction of the phrase “consisting...more

McDermott Will & Emery

Prosecution history primacy: “Consisting essentially of” means what applicant said it meant

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In a decision that underscores the primacy of prosecution history to determine claim scope, the US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s interpretation of the transitional phrase...more

Knobbe Martens

Keeping PACE With CRISPR

Knobbe Martens on

AGILENT TECHNOLOGIES, INC. v. SYNTHEGO CORP. - Before Prost, Linn, and Reyna. Appeal from the Patent Trial and Appeal Board. Obviousness does not require all claimed limitations to be expressly disclosed in a primary prior...more

A&O Shearman

Federal Circuit Affirms Patent Trial And Appeal Board Decision, Finding Claims Of Patents Covering CRISPR Guide RNA Technology As...

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On June 11, 2025, the United States Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB) decision invalidating two patents owned by Agilent Technologies. The patents at issue, U.S. Patent...more

Robins Kaplan LLP

Janssen Pharms., Inc. v. Mylan Labs. Ltd.

Robins Kaplan LLP on

Invega Trinza® (paliperidone palmitate) - Case Name: Janssen Pharms., Inc. v. Mylan Labs. Ltd., No. 2023-2042, 2025 WL 946390 (Fed. Cir. Mar. 28, 2025) (Circuit Judges Dyk, Prost, and District Judge Goldberg presiding;...more

DLA Piper

Federal Circuit Refines Obviousness Framework for Drug and Biologic Dosing Regimens

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The United States Court of Appeals for the Federal Circuit recently affirmed a district court ruling that a pharmaceutical dosing claim limitation was unpatentable due to obviousness-type double patenting. The court found...more

McDermott Will & Emery

Inventor’s Motivation to Combine Does Not Control Obviousness

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The US Court of Appeals for the Federal Circuit affirmed a district court decision rejecting claims of a patent application directed to a dosing regimen for a cancer treatment, finding the claims to be obvious where the...more

A&O Shearman

Federal Circuit Affirms PTAB Decision Regarding DNA Sampling Patent

A&O Shearman on

On January 6, 2025, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed the decision of the Patent Trial and Appeal Board (“PTAB”) rejecting a challenge to U.S. Patent No. 7,332,277 (“the ‘277...more

McDermott Will & Emery

Skilled Artisan’s View Is Decisive in Assessing Asserted Claim Drafting Error

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The Court of Appeal (CoA) of the Unified Patent Court (UPC) clarified the legal standard for correcting obvious type inaccuracies in patent claims, explaining that the view of a skilled person at the filing date is decisive...more

Goodwin

The Appeals Review Panel’s In Re Xencor Decision: The USPTO Provides Its Position on Written Description and Means-Plus-Function...

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On May 17, 2024, an Appeals Review Panel (ARP) of the United States Patent and Trademark Office (“USPTO”) released its decision in Ex parte Chamberlain (referred to in Federal Circuit proceedings as In re Xencor;...more

Morgan Lewis

Federal Circuit: Inherency in an Obviousness Analysis

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The US Court of Appeals for the Federal Circuit held that data obtained after an asserted patent’s priority date may be used to demonstrate what is “necessarily present” in a prior art embodiment. Although the district court...more

McDonnell Boehnen Hulbert & Berghoff LLP

Enzo Life Sciences, Inc. v. Becton, Dickinson and Co. (Fed. Cir. 2019)

Last week, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) finding claims of U.S. Patent No. 7,064,197 to be invalid for anticipation or obviousness, in Enzo Life Sciences, Inc. v. Becton,...more

Smart & Biggar

Year-end Round-up: Notable Canadian Patent Cases of 2018

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Earlier this month we published an exhaustive review of the life sciences and regulatory cases in the Canadian courts, and decisions on the merits for the year are summarized in our in our Rx IP Update 2018 Highlights in...more

Fenwick & West LLP

Patent Owners Win as Federal Circuit Reins in Gilead and AbbVie Double Patenting Rulings

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In a pair of patent owner victories, the U.S. Court of Appeals for the Federal Circuit issued decisions limiting the applicability of obviousness-type double patenting — known as OTDP — to invalidate or limit the term of...more

Morrison & Foerster LLP

What Are the Top Hatch-Waxman and BPCIA Developments for August 2018?

This month we highlight a district court opinion from Judge Dyk, sitting by designation, denying a preliminary injunction in a brand-vs-brand litigation, and a lengthy district court opinion from Judge Bryson, sitting by...more

Knobbe Martens

UC v. Broad Institute: No Interference-In-Fact in CRISPR Genome Editing Applications

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Federal Circuit Summary - On September 10, 2018, the Federal Circuit decided Regents of the University of California v. Broad Institute, Inc., affirming the Patent Trial and Appeal Board (PTAB)’s determination of no...more

Morgan Lewis

Federal Circuit OK's Use of Post-Priority-Date Evidence

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The ruling found that the use of such evidence was proper for written description and enablement....more

Smart & Biggar

Rx IP Update - May 2017

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Federal Court of Appeal finds that Apotex did not fail to mitigate its damages in relation to Apo-Trazodone drug submission - On April 6, 2017, the Federal Court of Appeal overturned the Federal Court’s finding that...more

Kilpatrick Townsend & Stockton LLP

Federal Circuit Remands IPRs to PTAB for Reference Consideration

The non-invasive prenatal testing field has been an active area for patent challenges. Ariosa has challenged patents held by competitors Sequenom and Verinata. The latter is patent owner in two IPR proceedings challenging...more

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