News & Analysis as of

Claim Limitations Patent Infringement Appeals

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

McDermott Will & Emery on

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

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

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

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

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

Mintz - Intellectual Property Viewpoints

Patent Claim Preamble Lessons from Arctic Cat Inc. v. GEP Power Products

The general rule is that a patent claim’s preamble does not limit the claim unless the preamble gives life, meaning, and vitality to the claim. The Federal Circuit’s recent decision in Arctic Cat Inc. v. GEP Power Products,...more

Mintz - Intellectual Property Viewpoints

Continental Circuits LLC v. Intel Corp., et al: Federal Circuit Reemphasizes Prohibition on Importing a Preferred Embodiment into...

The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential opinion finding that a lower court had improperly incorporated an embodiment from the specification of the asserted patents into the claims....more

Knobbe Martens

Federal Circuit Review - September 2018

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Federal Circuit Finds Claims Issued from Reexamination Co-Pending with Appeal Ineligible Where the Changes Did Not Affect Section 101 Eligibility - In SAP AMERICA, Inc. v. InvestPic, LLC, Appeal No. 2017-2081, the...more

Knobbe Martens

Endo Pharmaceuticals Solutions v. Custopharm Inc.

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Federal Circuit Summary - Before Moore, Linn, and Chen. Appeal from the United States District Court for the District of Delaware. Summary: A prior art reference does not inherently disclose the elements of a claim...more

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