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Patent Litigation Appeals Written Descriptions

Baker Botts L.L.P.

Third Quarter 2024 Federal Circuit Law Update

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Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant...more

McDermott Will & Emery

Later-Filed, Earlier-Expiring Patent Not an ODP Reference

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Addressing invalidity due to obvious-type double patenting (ODP) based on later-filed-related patents, the US Court of Appeals for the Federal Circuit reversed a district court’s application of In re Cellect (Fed. Cir. 2023)...more

McDermott Will & Emery

Holy Pulmonary Hypertension, Batman: Method of Treatment Not Constrained by Safety and Efficacy

The US Court of Appeals for the Federal Circuit affirmed a district court’s holding that the asserted method of treatment patent was valid and infringed because safety and efficacy are not patent concerns. The Federal Circuit...more

Sheppard Mullin Richter & Hampton LLP

Parus Holdings, Inc. v. Google LLC, No. 2022-1269, 2022-1270 (Fed. Cir. Jun. 12, 2023)

This case concerns determining the prior art status of certain references in an inter partes review. The Federal Circuit considered whether the Patent Trial and Appeal Board (the “Board”) was correct in declining to consider...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2023 #4

United Therapeutics Corporation v. Liquidia Technologies, Inc., Appeal Nos. 2022-2217, 2023-1021 (Fed. Cir. July 24, 2023) In the Federal Circuit’s only precedential patent case this week, the Court considered questions...more

McDermott Will & Emery

First Rule of the PTAB? Play by the Rules

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The US Court of Appeals for the Federal Circuit affirmed two Patent Trial & Appeal Board decisions holding the challenged claims unpatentable as obvious, even though the Board declined to consider evidence of antedating and...more

Bradley Arant Boult Cummings LLP

Is SCOTUS Looking to Change the Enablement Requirement for Patents?

The Supreme Court is set to hear oral arguments in Amgen, Inc. v. Sanofi (No. 21-757) on Monday, March 27, 2023. The highly contentious question before the high court focuses what an applicant must show to meet the enablement...more

McDermott Will & Emery

A Maze-Like Path and Laundry List Don’t Provide Written Description

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) decision that there was insufficient written description in the asserted priority applications to support a genus claim because of...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2023

Regents of the University of Minnesota v. Gilead Sciences, Inc., Appeal No. 21-2168 (Fed. Cir. Mar. 6, 2023) The Federal Circuit’s only precedential patent opinion this week focuses on the written description requirement...more

McDermott Will & Emery

Swing and a Miss: Failed Interferences Don’t Affect Later Ones

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The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s (Board) interference decision finding that priority belonged to the junior party based on sufficiently corroborated reduction to...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Case - July 2022 #3

CareDx, Inc. v. Natera, Inc., Appeal Nos. 2022-1027, -1028 (Fed. Cir. July 18, 2022) - In its only precedential patent opinion this week, the Federal Circuit held patents directed to the detection of organ transplant...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

Knobbe Martens

Niazi’s Patent Survives on Appeal: Federal Circuit Reverses In Part Lower Court’s Decision

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On April 11, 2022, Niazi Licensing Corporation (“Niazi”) succeeded in part in its appeal at the Federal Circuit in Niazi Licensing Corporation v. St. Jude Medical S.C. Inc. Niazi’s lawsuit alleged that St. Jude Medical S.C....more

Knobbe Martens

“Pliable” Language Results in “Resilient” Patent Claims

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NIAZI LICENSING CORPORATION v. ST. JUDE MEDICAL S.C., INC. Before Taranto, Bryson, and Stoll. Appeal from the U.S. District Court for the District of Minnesota. Summary: Providing examples in the claim language and...more

McDermott Will & Emery

Outlier? Split Federal Circuit Denies En Banc Review of Written Description Requirement

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The US Court of Appeals for the Federal Circuit denied a patent owner’s request for en banc rehearing of a panel decision that invalidated a patent for lack of written description on the basis that a person of skill in the...more

McDermott Will & Emery

Patent Venue Statute Doesn’t Apply to Third-Party Counterclaim Defendant; Acts in Furtherance of Partnership May Be Imputed to...

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The US Court of Appeals for the Federal Circuit affirmed a district court’s determination of proper venue, finding that the patent venue statute, 28 U.S.C. § 1400(b), does not apply to a third-party counterclaim defendant and...more

McDermott Will & Emery

Federal Circuit Won’t Rescue Parachute Patent

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) decision that claims to a ballistic parachute were obvious over the prior art based on knowledge attributable to artisans and...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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2022 #2

In re: Volkswagen Group of America, Inc. and In re: Hyundai Motor America, Appeal Nos. 2022-108, -109 (Fed. Cir. Mar. 9, 2022) - In the most recent of multiple mandamus rulings issued by the Federal Circuit in relation to...more

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

Is Silence Disclosure?

On January 3, 2021, The Federal Circuit held in a 2-1 decision in Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc. (Fed. Cir. 2022) that the claims of Novartis’ U.S. Pat. No. 9,187,405 (“the ’405 patent”) met the...more

Knobbe Martens

Silence May Support Negative Claim Limitation

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NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC. Before Moore, Linn, and O’Malley. Appeal from the United States District Court for the District of Delaware. Summary: A patent application that was silent about a...more

McDermott Will & Emery

Rounding Error: Intrinsic Evidence Informs Plain and Ordinary Meaning

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Vacating a stipulated infringement judgment based on an incorrect claim construction, the US Court of Appeals for the Federal Circuit explained that it is improper to isolate claim language from the intrinsic evidence when...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2021 #2

AstraZeneca AB v. Mylan Pharmaceuticals Inc., Appeal No. 2021-1729 (Fed. Cir. Dec. 8, 2021) - Our Case of the Week again focuses on numerical values in claims. Last week we addressed a case involving whether there was...more

McDermott Will & Emery

IPR on Written Description? Claims Found Unpatentable Based on Lack of Entitlement to Priority Date

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) ruling, based on a written description analysis, that certain claims were invalid as anticipated by an earlier priority...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2021

Biogen International GMBH v. Mylan Pharmaceuticals Inc., Appeal No. 2020-1933 (Fed. Cir. Nov. 30, 2021) - For the second time in two weeks, our Case of the Week focuses on the written description requirement, in...more

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