The Federal Circuit recently refused to apply collateral estoppel to claims of a patent asserted in district court litigation based on a Patent Trial and Appeal Board (PTAB) decision finding similar claims from the same...more
The District of Delaware recently denied in part a motion to compel production of documents and testimony between a patentee and potential investors, valuation firms and an international bank based on the common interest...more
The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) final written decision holding that the prior art exception of AIA Section 102(b)(2)(B) does not apply to a prior sale by an inventor when the sale is...more
In a series of rulings on a motion in limine, the District of Delaware recently distinguished between what qualifies as being incorporated by reference and what does not for the purposes of an anticipation defense. In short,...more
The Federal Circuit recently reversed a district court decision that found a patent that did not describe after-arising technology failed to satisfy the written description requirement. In so doing, the Federal Circuit...more
2/14/2025
/ Abbreviated New Drug Application (ANDA) ,
Claim Construction ,
Enablement Inquiries ,
Generic Drugs ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pharmaceutical Patents ,
Section 112 ,
Written Descriptions
The District of Delaware recently rejected a patentee’s argument that non-production of an opinion letter from counsel, combined with knowledge of the patent, warranted a finding that defendant induced infringement. ...more
The District of Delaware recently denied a motion to dismiss a patent infringement complaint involving gene editing technology that sought relief under the Safe Harbor Provision of the Hatch-Waxman Act. Specifically, the...more
1/20/2025
/ Biotechnology ,
Food and Drug Administration (FDA) ,
Hatch-Waxman ,
Intellectual Property Litigation ,
Life Sciences ,
Motion to Dismiss ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pharmaceutical Patents ,
Regulatory Requirements ,
Safe Harbors
The Federal Circuit vacated a district court’s fee award because the district court considered certain information that was not relevant to the question of whether plaintiff’s case was exceptional. Specifically, the Federal...more
The Federal Circuit recently upheld the USPTO’s authority under the estoppel provision 37 C.F.R. § 42.73(d)(3)(i) to prohibit a patent owner from obtaining patent claims that are not patentably distinct from claims previously...more
In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held that an expert must meet the definition of a “person of ordinary skill in the art” of the asserted patents in order to opine...more
The Federal Circuit dismissed an appeal from an inter partes review (“IPR”) final written decision for lack of standing where it found the appellant failed to provide evidence sufficient to show it suffered an injury in fact....more
The Federal Circuit recently affirmed an ITC holding that the AIA’s § 102 on-sale bar applies to the sale of a product made according to a secret process when that sale occurs more than one year before the patent’s effective...more
In a case it described as “‘a prime example’ of when ODP does not apply,” the Federal Circuit recently reversed a decision from the District of Delaware that invalidated a claim for obviousness-type double patenting (ODP),...more
In an appeal from the ITC, the Federal Circuit recently held that by presenting cumulative financial data across different products that practice various combinations of patents, appellant provided insufficient evidence for a...more
The Federal Circuit recently ruled that a petitioner in an inter partes review (IPR) proceeding with related district court litigation cannot recover attorneys’ fees under 35 U.S.C. § 285. The Federal Circuit further held...more
The Federal Circuit reversed a decision from the District of Delaware dismissing a case for failing to plead induced infringement because the totality of the evidence raised fact questions that could not be resolved on a...more
A divided panel of the Federal Circuit affirmed a district court’s grant of summary judgment of noninfringement, holding that importation of two product samples into the U.S. was reasonably related to obtaining FDA approval...more
4/22/2024
/ 35 U.S.C. § 271(e)(1) ,
Dual Purpose ,
FDA Approval ,
Innovation Patent ,
Life Sciences ,
Medical Devices ,
Noninfringement ,
Patent Infringement ,
Patents ,
Safe Harbors ,
Summary Judgment
In a Hatch-Waxman case, the District Court for the District of New Jersey recently found that a generic label that included an allegedly infringing permissive use did not induce infringement where the label cautioned against...more
The Federal Circuit held that a subcontractor’s receipt of retroactive payment from a government grant brought the subcontractor’s work under Bayh-Dole even though the work was performed before the contract was entered into....more
The Federal Circuit recently vacated a PTAB decision that claims of an “e-cigarette” patent were unpatentable for lack of written description under 35 U.S.C. § 112. The question on appeal was whether a claimed range was...more
The Central District of California denied a defendant’s motion for leave to amend to allege inequitable conduct due to the defendant’s delay in deposing a key inventor until the end of fact discovery. The district court held...more
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
12/20/2023
/ Generic Drugs ,
Hatch-Waxman ,
Intellectual Property Protection ,
Obviousness ,
Obviousness-Type Double Patenting (ODP) ,
Patent Infringement ,
Patent Litigation ,
Patent Term Adjustment ,
Patents ,
Pharmaceutical Patents ,
Safe Harbors
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
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
10/31/2023
/ Biotechnology ,
Comment Period ,
Deadlines ,
Genetic Materials ,
Intellectual Property Protection ,
International Harmonization ,
Life Sciences ,
Patent Law Treaty ,
Patents ,
Pharmaceutical Industry ,
USPTO ,
WIPO
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