News & Analysis as of

Pharmaceutical Patents Claim Construction United States Patent and Trademark Office

Womble Bond Dickinson

Reminder: “Consisting essentially of” Is U.S. Patent Claim Language Needing Interpretation

Womble Bond Dickinson on

On June 30, 2025, the Federal Circuit issued a precedential opinion in Eye Therapies v. Slayback Pharma in which the court interpreted the transition phrase “consisting essentially of” to be a closed term excluding other...more

Sheppard Mullin Richter & Hampton LLP

Lexicography: Clear And Unequivocal

This Federal Circuit opinion analyzes lexicography in the context of claim construction. Alnylam Pharmaceuticals owns U.S. Patent Nos. 11,246,933 (parent) and 11,382,979 (child). These patents relate to biodegradable...more

Foley Hoag LLP

The Enlarged Board of Appeal of the EPO Further Aligns Claim Construction With U.S. and U.K.

Foley Hoag LLP on

Key Takeaways: - The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) issued its opinion in G1/24 on June 18, 2025 resolving divergent case law on how patent claims should be interpreted at the EPO. - The...more

Wilson Sonsini Goodrich & Rosati

Method of Treatment Claim’s Limiting Preamble Must Satisfy the Written Description Requirement

On March 13, 2025, the U.S. Court of Appeals for the Federal Circuit issued a decision in the case of In Re: Xencor, Inc. In this Appeal from the Appeals Review Panel of the Patent Trial and Appeal Board (ARP), with regard to...more

Knobbe Martens

Jepson Claim Preamble Requires Written Description Support for Conventional Aspects of the Invention

Knobbe Martens on

IN RE: XENCOR, INC. Before Hughes, Stark, and Schroeder (sitting by designation).  Appeal from the U.S. Patent and Trademark Office, Patent Trial and Appeal Board. To provide adequate written description for a Jepson claim,...more

Alston & Bird

Patent Case Summaries | Week Ending September 20, 2024

Alston & Bird on

Vascular Solutions LLC, et al. v. Medtronic, Inc., et al., No. 2024-1398 (Fed. Cir. (D. Minn.) Sept. 16, 2024). Opinion by Mazzant (sitting by designation), joined by Moore and Prost....more

Sheppard Mullin Richter & Hampton LLP

2023 Federal Circuit Case Summaries - Intellectual Property: Year End Report

We are pleased to share Sheppard Mullin’s inaugural “Year in Review” report that collects and reports on most key patent law-related Federal Circuit decisions for 2023. This is a follow up to the quarterly report we...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends: Biologics at the PTAB: Statistics and Insights into Notable Biologics Decisions

In June 2021, the US Patent and Trademark Office (USPTO) published an update to its study of America Invents Act (AIA) trials involving challenges to Orange Book-listed and biologic patents from September 16, 2012, through...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends: Case Studies and Trends at the PTAB Involving 35 U.S.C. § 112

Over the last 20-plus years, US Court of Appeals for the Federal Circuit cases concerning written description and enablement have become a hot-button issue in the chemical and life sciences practices. The year 2021 was no...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights: January 2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Buckingham, Doolittle & Burroughs, LLC

Dear Patenticity: Patent Prophet

Dear Patenticity, I have a chemical invention and I want to obtain the broadest coverage I can. The problem is I have not done much lab work, so I only have a couple real examples. I know that the written description...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2021 #4

Teva Pharms. Int’l GmbH v. Eli Lilly and Co., Appeal Nos. 2020-1747, -1748, -1750 (Fed. Cir. Aug. 16, 2021) - Eli Lilly and Co. v. Teva Pharms. Int’l GmbH, Appeal Nos. 2020-1876, -1877, -1878 (Fed. Cir. Aug. 16, 2021) - ...more

Haug Partners LLP

How Different Claim Construction Standards Can Ultimately Determine the Validity of a Patent

Haug Partners LLP on

Recently, the Federal Circuit issued a decision in Immunex Corp. v. Sanofi-Aventis U.S. LLC addressing the different claim construction standards used by the Patent Trial and Appeal Board (“PTAB”) (broadest reasonable...more

Foley & Lardner LLP

District Court Finds PK Targets Of VIMOVO Patents Indefinite

Foley & Lardner LLP on

In an opinion issued November 19, 2018, Judge Chesler of the U.S. District Court for the District of New Jersey found two Orange Book-listed patents for VIMOVO® invalid for indefiniteness in the way certain pharmacokinetic...more

Morrison & Foerster LLP

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

This month we highlight a new law requiring notification to the Federal Trade Commission and Department of Justice of biosimilar litigation settlements and perhaps the end of a long-running Mylan venue dispute in Delaware....more

Foley & Lardner LLP

New Year's Resolutions For The U.S. Patent System

Foley & Lardner LLP on

It’s that time of year when we make resolutions to improve our health, our relationships, our careers, or other areas of our lives. I’m not starting a new diet today (although if I were, the invention described in this patent...more

Perkins Coie

Inter Partes Review Proceedings: A Third Anniversary Report

Perkins Coie on

When inter partes review (IPR) proceedings became effective in September 2012, few people would have predicted the transformative effect it would have on patents and the litigation landscape. Three years in, IPR has become...more

WilmerHale

Federal Circuit Patent Updates - August 2015

WilmerHale on

The Dow Chemical Company v. Nova Chemicals Corporation (No. 2014-1431, -1462, 8/28/15) (Prost, Dyk, Wallach). Dyk, J. Reversing award of supplemental damages. "We hold that the intervening change in the law of...more

Knobbe Martens

Federal Circuit Review | April 2015

Knobbe Martens on

No Recovery Of Lost Profits From Related Companies’ Activities - In WARSAW ORTHOPEDIC, INC. v. NUVASIVE, INC., Appeal Nos. 2013-1576, -1577, the Federal Circuit held that a company was not entitled to lost profits based...more

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