Patent Law Weblog
recent posts
- Why the Alice Test is Stupid, Part IV: The Usefulness Paradox
- Teva Capitulates to Federal Trade Commission Coercion
- USPTO Issues Memoranda on Subject Matter Eligibility
- USPTO Revokes Guidance on AI-Assisted Inventorship, But Rules Remain Basically the Same
- Why the Alice Test is Stupid, Part III: Eligible Independent Claims Can Have Ineligible Dependent Claims
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Category: Claim Construction
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By Kevin E. Noonan — A patent applicant dissatisfied by an patent examiner's rejection of that applicant's claims in ex parte prosecution has recourse by appeal to the Patent Trial and Appeal Board (PTAB) under 35 U.S.C. § 134, and to the Federal Circuit thereafter under 35 U.S.C. § 141. While there is no right…
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By Kevin E. Noonan — Patent law in many respects has its own language and idiosyncratic expressions, and one such respect involves so-called "transitional" words or phrases (discussed in greater depth in the Manual of Patent Examination Procedure § 2111.03). They are termed "transitional" because they mediate the transition between a claim preamble and the…
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By Kevin E. Noonan — One of the assumptions, or promises, or hopes, attendant on the inauguration of post-grant review proceedings (particularly inter partes reviews) under the Leahy-Smith America Invents Act was that, as in European Opposition Proceedings, a Patent Owner would be able to propose amendments to overcome unpatentability arguments raised by Petitioners. This…
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Note: This post addresses a Federal Circuit decision that issued on March 14, 2025. This appeal involved Plaintiff-Appellant Regeneron Pharmaceuticals, Inc., Defendant-Appellee Amgen Inc. (Case 24-2351). At trial, this case also included Defendants Mylan Pharmaceuticals Inc.; Amgen USA, Inc.; Biocon Biologics Inc.; Celltrion, Inc.; Formycon AG; and Samsung Bioepsis Co.; as well as the Defendants-Appellee.…
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By Kevin E. Noonan — Sometimes important contributions to innovation can come from the mundane rather than the extraordinary. One (perhaps apocryphal) example comes from the story of the early development of television by Philo Farnsworth (the story, but not the apocrypha, is set forth in Evan Schwartz's book The Last Lone Inventor). In this aspect…
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By Kevin E. Noonan — Completing a recent jurisprudential "hat trick,"* the Federal Circuit affirmed a District Court grant of a preliminary injunction against a biosimilar applicant for Regeneron's EYLEA biologic drug in Regeneron Pharmaceuticals, Inc. v. Mylan Pharmaceuticals Inc. As in the earlier appeals, the injunction was based on infringement by Celltrion's EYLEA biosimilar (designated…
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By Kevin E. Noonan — In a joint appeal of two adverse decisions from the District Court, the Federal Circuit on procedural grounds rejected an appeal from the Wisconsin Alumni Research Foundation ("WARF") in Wisconsin Alumni Research Foundation v. Apple Inc. The decision was based on the Court's conclusion that WARF was precluded from asserting infringement…
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By Kevin E. Noonan – Last week the Federal Circuit handed down a pair of non-precedential decisions affirming the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR) proceedings. This post concerns the decision in Medtronic, Inc. v. Teleflex Life Sciences Ltd. The case arose in two IPR proceedings involving U.S. Patent No. 8,142,413, owned…
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By Kevin E. Noonan – One of the characteristics of patent infringement litigation in the aftermath of the Supreme Court's decision in Markman v. Westview Instruments, Inc. (holding that claim construction was a matter of law to be reviewed de novo by the Federal Circuit; but see Teva Pharma. USA, Inc. v. Sandoz, Inc.) was that an inordinate…
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By Kevin E. Noonan – The importance of claim construction, and how construing the same term facing a challenge based on different prior art in separate inter partes review proceedings can result in contrary findings on invalidity, was illustrated by the Federal Circuit's decision recently in Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc. The…
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