News & Analysis as of

Appeals Claim Limitations

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Finds that a Narrowing Claim Limitation that Expressly Requires Optional Elements of a Markush Group from the Same...

In Maxell, Ltd. v. Amperex Technology Limited, 2023-1194 (Fed. Cir. Mar. 6, 2024), the Federal Circuit reaffirms that a patent claim that includes narrowing limitations requiring only some elements of a Markush group recited...more

McDermott Will & Emery

That’s So Metal: Narrow Limitation Doesn’t Contradict Broader One

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The US Court of Appeals for the Federal Circuit reversed a district court’s indefiniteness determination, finding that two claim limitations – one broad and one narrow – were not contradictory since it was possible to meet...more

AEON Law

Patent Poetry: Federal Circuit Finds Semiconductor Claims Unpatentable

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The Federal Circuit has affirmed a decision of the Patent Trial and Appeal Board (PTAB or Board) finding unpatentable certain claims of a patent for making semiconductor devices. The case is Bell Semiconductor LLC v....more

McDermott Will & Emery

If Prior Art Discloses Ingredients and How to Mix Them, the “Cake” Is Anticipated

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The US Court of Appeals for the Federal Circuit affirmed that challenged claims were invalid as anticipated based on principles of inherency where the disclosed prior art formulations and processes necessarily met a disputed...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2022

Provisur Technologies, Inc. v. Weber, Inc., Appeal Nos. 2021-1942, -1975 (Fed. Cir. Sept. 27, 2022) - In this week’s Case of the Week, the Federal Circuit reviewed an IPR decision and addressed the Patent Trial and Appeal...more

McDermott Will & Emery

Heightened Written Description Standard for Negative Limitations?

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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

Harris Beach PLLC

Federal Circuit Imposes Heightened Standard for Written Description Support of Negative Claim Limitations

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In Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc., the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) held patent claims invalid for lack of written description where a negative limitation was...more

Knobbe Martens

Silence Is No Support for Negative Claim Limitation

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NOVARTIS PHARMACEUTICALS CORP. V. HEC PHARM CO., LTD. Before Moore, Hughes, and Linn (dissenting). Appeal from the United States District Court for the District of Delaware. Summary:  Silence regarding the presence or...more

McDermott Will & Emery

Not a Bullseye: Defendant Must Rebut Presumption That Claims Lacking “Means” Language Don’t Fall Under § 112 ¶ 6

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Reversing a district court finding of indefiniteness under 35 U.S.C. § 112 ¶ 6, the US Court of Appeals for the Federal Circuit found that the district court erred by ignoring unrebutted evidence that the challenged claim...more

McDermott Will & Emery

Count On It, Plural Term Means More Than One

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The US Court of Appeals for the Federal Circuit affirmed Patent Trial & Appeal Board (Board) patentability decisions after determining that the Board did not err in construing multiple terms within the challenged patents....more

Haug Partners LLP

Can Biopharma Functional Genus Patent Claims Be Resuscitated?

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An en banc rehearing petition to the Federal Circuit seeks to breathe life back into the widespread practice of patenting a genus of compounds by claiming their common functional characteristics. This claiming practice was...more

McDonnell Boehnen Hulbert & Berghoff LLP

Amgen Inc. v. Sanofi (Fed. Cir. 2021)

A little less than four years ago, the Federal Circuit rendered a decision in Amgen Inc. v. Sanofi that brought clarity to how the Court (and U.S. Patent and Trademark Office) should apply the written description requirement...more

Knobbe Martens

Imaginary Slice of Accused Product Failed to Satisfy Structural Claim Limitation

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NEVILLE v. FOUNDATION CONSTRUCTORS, INC. Before Lourie, O’Malley, and Chen. Appeal from the United States District Court for the Central District of California. Summary: The Federal Circuit affirmed a construction of...more

Knobbe Martens

Federal Circuit Review - June 2020

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Non-Infringement Need Not Be “Actually Litigated” To Shield Accused Products From Infringement Liability In Subsequent Actions - In In Re Personal Web Technologies LLC, Appeal No. 19-1918, the Federal Circuit ruled that the...more

Knobbe Martens

Preamble Found Limiting Where It Supplied Antecedent Basis for Other Claim Limitations

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SHOES BY FIREBUG LLC v. STRIDE RITE CHILDREN'S GROUP - Before Lourie, Moore, and O’Malley. Appeal from the Patent Trial and Appeal Board. Summary: In similar claims of two related patents, one preamble was limiting...more

McDermott Will & Emery

Court’s Drug Patent Prescription: Unclaimed Disclosure is Dedicated

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Addressing the disclosure-dedication doctrine, the US Court of Appeals for the Federal Circuit concluded that the disclosure-dedication doctrine barred a patent owner’s claim of infringement under the doctrine of equivalents...more

Katten Muchin Rosenman LLP

Federal Circuit Issues Opinion on "Inherent Obviousness" in Patent Claim, Invalidating Orange Book Listed Pharma Patent

Key Points - Federal Circuit issued precedential opinion in Hospira Inc. v. Fresenius Kabi USA, LLC that affirmed obviousness of a liquid drug patent claim, encouraging future patent challengers to raise the issue of...more

Knobbe Martens

Federal Circuit Review - November 2019

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The Appointments Clause: Ensuring That PTAB Decisions Are Subject to Constitutional Checks and Balances  In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2251, the Federal Circuit ruled that, under the then-existing...more

McDermott Will & Emery

Travel Trailer Pulls Patent Around Prior Art

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In an appeal stemming from the denial of a patent application under § 102(b), the US Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) by holding that the claims’ preambles were claim...more

Knobbe Martens

Preamble term was a structural limitation of the claims

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IN RE: DAVID FOUGHT, MARTIN CLANTON - Before Newman, Moore, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: A preamble description of the invention as a “travel trailer” was a structural limitation....more

McDermott Will & Emery

When Is “Wherein” Clause Limiting? When It’s Material to Patentability

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The US Court of Appeals for the Federal Circuit affirmed a district court’s finding, based largely on the prosecution history, that disputed “wherein” clauses were limiting and therefore the grant of a preliminary injunction...more

McDermott Will & Emery

Incomplete Hybridization: Lack of Enablement Found Where Claims Encompass Thousands of Possibilities

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Finding that the number of possible embodiments that could fit within the limitations of the asserted claims numbered in the “tens of thousands,” the US Court of Appeals for the Federal Circuit held that the claims were not...more

Knobbe Martens

Plausible and Specific Factual Allegations That Aspects of a Claim Are Inventive Are Sufficient to Defeat a Motion to Dismiss for...

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CELLSPIN SOFT, INC. V. FITBIT, INC. ET AL. Before Lourie, O’Malley, and Taranto. Appeal from the United States District Court for the Northern District of California. Summary: While not all factual allegations that are...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2019 #4

PATENT CASE OF THE WEEK - Papst Licensing GMBH & Co. KG v. Samsung Electronics America, Inc., Appeal No. 2018-1777 (Fed. Cir. May 23, 2019) - In a sternly-worded decision this week, the Federal Circuit held claims to...more

Jones Day

A Phoenix From The Ashes

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Recently, the Federal Circuit breathed life, again, into U.S. Patent No. 7,802,310 (the ’310 patent), which is the subject of one of the longest running inter partes review (IPR) proceedings. In Pers. Web Techs., LLC v....more

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