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Claim Limitations Patents Patent Infringement

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

Jones Day

PTAB Not Required to Decode Petitioner Arguments

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In a precedential opinion, the Federal Circuit affirmed two Patent Trial and Appeal Board (“PTAB”) patentability decisions, holding that the PTAB did not abuse its discretion by not addressing arguments not clearly presented...more

Jones Day

Insufficient Arguing Below Causes Forfeited Review Above

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Absent exceptional circumstances, the Federal Circuit will generally not consider arguments that a party failed to present in the tribunal under review. In Netflix, Inc. v. DivX, LLC, the Federal Circuit held that IPR...more

Robins Kaplan LLP

Tris Pharma, Inc. V. Teva Pharms. Usa, Inc., Quillichew Er® (Methylphenidate)

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Case Name: Tris Pharma, Inc. v. Teva Pharms. USA, Inc., Civ. No. 20-5212 (KM)(ESK) (D.N.J. Aug. 16, 2022) (McNulty, J.)  Drug Product and Patent(s)-in-Suit: QuilliChew ER® (methylphenidate); U.S. Patents Nos. 9,545,399 (“the...more

Robins Kaplan LLP

Chiesi Usa, Inc. V. Aurobindo Pharma Usa, Inc. - Cleviprex® (Clevidipine Injectable Emulsions)

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Case Name: Chiesi USA, Inc. v. Aurobindo Pharma USA, Inc., Civ. No. 19-18756, 2022 WL 3703207 (D.N.J. Aug. 16, 2022) (Quraishi, J.)  Drug Product and Patent(s)-in-Suit: Cleviprex® (clevidipine injectable emulsions); U.S....more

Robins Kaplan LLP

Vifor Fresenius Medical Care Renal Pharma Ltd. v. Teva Pharms. USA, Inc.

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Case Name: Vifor Fresenius Medical Care Renal Pharma Ltd. v. Teva Pharms. USA, Inc., Civ. No. 18-390 (MN), 2022 WL 3562555 (D. Del. Aug. 18, 2022) (Noreika, J.) Drug Product and Patent(s)-in-Suit: Velphoro® (sucroferric...more

McDonnell Boehnen Hulbert & Berghoff LLP

Par Pharmaceutical, Inc. v. Eagle Pharmaceuticals, Inc. (Fed. Cir. 2022)

The consequences of expressly recited claim limitations and how patentees can be held to these limitations was illustrated in the Federal Circuit's recent decision in Par Pharmaceutical, Inc. v. Eagle Pharmaceuticals, Inc. ...more

Haug Partners LLP

Federal Circuit Rehearing Panel Vacates its January Decision and Reverses District Court Finding of Sufficient Written Description...

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On June 21, 2022, the Court of Appeals for the Federal Circuit (“CAFC”), in Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc., granted petition for panel rehearing, vacated its prior decision, and reversed the...more

Knobbe Martens

Federal Circuit Review - March 2022

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Claim Limitation Not Disclosed by Any Reference but Disclosed by “Proposed Combination” of References Is Obvious - In Hoyt Augustus Fleming v. Cirrus Design Corporation, Appeal No. 21-1561, the Federal Circuit held that a...more

Akin Gump Strauss Hauer & Feld LLP

Cancellation of Independent Claims in IPR Does Not Estop Doctrine of Equivalents Arguments for Surviving Dependent Claims

A judge in the Eastern District of Virginia recently held that cancellation of independent claims in an inter partes review (IPR) did not preclude the plaintiff from asserting infringement based on the doctrine of equivalents...more

Mintz - Intellectual Property Viewpoints

Written Description Requirement Challenges: Federal Circuit Decision Sheds Light on How Expert Testimony Can Help

Earlier this month, in Novartis Pharms. Corp., Inc. v. Accord Healthcare, Inc., et al., No. 2021-1070, the Federal Circuit issued a helpful decision concerning the not-often-discussed written description requirement. The...more

Fitch, Even, Tabin & Flannery LLP

Expert Testimony May Establish Written Description Support for Negative Claim Limitation

On January 3, in Novartis Pharmaceuticals Corporation v. Accord Healthcare, Inc., the Federal Circuit found written description support for a negative claim limitation, even though the negative claim limitation did not have...more

McDonnell Boehnen Hulbert & Berghoff LLP

Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc. (Fed. Cir. 2022)

When does the absence of evidence turn into evidence of absence, and when does such absence amount to an adequate written description of the absence of a step of a method claim?  This is a question that comes readily to mind...more

McDonnell Boehnen Hulbert & Berghoff LLP

Jennewein Biotechnologie GmbH v. International Trade Commission (Fed. Cir. 2021)

The International Trade Commission can more readily provide injunctive relief against an adjudged infringer than a district court, under appropriate conditions (i.e., with regard to an infringing product or a product made by...more

Knobbe Martens

Choose Your Words Carefully: Inventors Are Masters of Their Claims, and the Words They Use to Describe and Claim Their Invention...

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BIO-RAD LABORATORIES, INC. v. ITC - Before Newman, Lourie, and Dyk. Appeal from the ITC. Summary: Patentees cannot escape the bounds of their claims by promoting oversimplified characterizations of those claims....more

Fox Rothschild LLP

Judge Connolly Grants Defendant’s Motion For Summary Judgment Of Indefiniteness In Patent Infringement Action

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By Memorandum Opinion entered by The Honorable Colm F. Connolly in University of Massachusetts et al. v. L’Oréal USA, Inc., Civil Action No. 17-0868-CFC-SRF (D.Del. April 20, 2021), the Court granted Defendant L’Oréal’s...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Bayer v. Baxalta: Federal Circuit Upholds Jury’s 17.78% Royalty Award for Patent Infringement by Adynovate® (Factor VIII,...

The Federal Circuit has affirmed Bayer’s patent infringement victory related to Baxalta’s biologic product, Adynovate.  Bayer Healthcare LLC v. Baxalta Inc., No. 2019-2418, 2021 WL 771700 (Fed. Cir. Mar. 1, 2021).  At the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Bracco Diagnostics Inc. v. Maia Pharmaceuticals, Inc. (Fed. Cir. 2020)

Stipulating to infringement after a contrary claim construction is a conventional stratagem for a losing party to have a final judgment that can be challenged before the Federal Circuit.  The risk of course, is that if the...more

Knobbe Martens

An Old Method Using an Old Product From a New Source Is Not New

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BIOGEN MA INC. v. EMD SERONO, INC. Before Newman, Linn, and Hughes. Appeal from the District Court of the District of New Jersey. Summary: A known method of administering a known product made by a new process is not...more

Knobbe Martens

Federal Circuit Review - August 2020

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Claims Covering Human Engineering That Exploit a Naturally-Occurring Phenomenon Are Patent Eligible - In Illumina, Inc. V. Ariosa Diagnostics, Inc., Appeal No. 19-1419, the Federal Circuit modified its earlier decision...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

Troutman Pepper

Federal Circuit Review - Issue 277

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277-1 Federal Circuit Affirms District Court Claim Construction in Foundation Pile Patent Infringement Dispute - The United States Court of Appeal for the Federal Circuit recently upheld the Central District of...more

Goodwin

ITC 337 Quarterly Insider Q2 2020

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Goodwin’s 337 Quarterly Insider remains the premiere publicly available source for keeping up to date on all meaningful decisions coming out of the Commission. Please find below Goodwin’s insights on the months of April, May,...more

Mintz - Intellectual Property Viewpoints

The Standard Does Rule Them All: Federal Circuit Panel Finds Standard Sufficient to Prove Infringement for SEP Compliant Products

The Federal Circuit yesterday, in a decision likely to be celebrated by holders of standard essential patents (“SEPs”), found that it is appropriate for the jury to decide essentiality of a patent, rather than the judge...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

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