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 — 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 Court finds the district court's construction to be correct, the stipulation precludes appellate…
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By Kevin E. Noonan — Interferences were rendered unnecessary with the passage of the Leahy-Smith America Invents Act in 2011, but they linger in disputes between patents and applications claiming priority to applications filed before the change to a "first-inventor-to-file" system. The Federal Circuit recently upheld the Patent Trial and Appeal Board's priority determination in…
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By Kevin E. Noonan — It has long been understood that claim construction can, and frequently is, dispositive in patent litigation. This truism was the basis for the Federal Circuit affirming the District Court's decision against a generic drug producer in its recent decision in Par Pharmaceutical, Inc. v. Hospira, Inc. And the case being…
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By Kevin E. Noonan — The Federal Circuit recently vacated a District Court decision by Federal Circuit Judge Dyk, sitting by designation, based on erroneous claim construction in Baxalta Inc. v. Genentech, Inc. The case arose over Genentech's Hemlibra® (emicizumb-kxwh) product, which Baxalta alleged infringed its U.S. Patent No. 7,033,590. Baxalta asserted claims 1, 4,…
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By Kevin E. Noonan — The Federal Circuit affirmed the Patent Trial and Appeal Board's (PTAB) claim construction (and inter partes review (IPR) decision invalidating claims for obviousness) in it recent Genentech, Inc. v. Iancu decision, and also had the occasion to review and affirm the Board's procedure-based denial of patent owner Genentech's motion to…
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By Kevin E. Noonan — Transitional terms in patent law (conventionally, "comprising," "consisting of," and the more arcane "consisting essentially of") have their own provenance and meaning, denoting limitations that are "open" (comprising) or "closed" (consisting). But how should a court construe instances where these terms seem to be at odds with one another? The…
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By Kevin E. Noonan — Late last month, the Federal Circuit affirmed a District Court grant of a preliminary injunction based on claim construction involving the effect of two "wherein" clauses in Allergan Sales, LLC v. Sandoz, Inc. The litigation involved Allegan's U.S. Patent Nos. 9,770,453, 9,907,801, and 9,907,802, which are directed to the ophthalmic…
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By Kevin E. Noonan — Albert Einstein once famously (albeit perhaps apocryphally) said that "[c]ompound interest is the most powerful force in the universe." Not to contradict the creator of 20th Century physics, but it is just as likely that the most powerful force in the universe is the power of unintended consequences. The Federal…
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By Kevin E. Noonan — The Federal Circuit continued its explication of the circumstances wherein an inter partes review petition is time-barred under 35 U.S.C. § 315(b) in Mayne Pharma Int'l v. Merck Sharp & Dohme Corp., decided earlier this month, and as a bonus, illustrated how including disclosure in a specification for completeness and…
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Federal Circuit Reverses Board in Two IPR Decisions By Joseph Herndon — In International Business Machines Corp. (IBM) v. Iancu, the Federal Circuit found that the Board's interpretation of key claim limitations was incorrect resulting in the Board's decisions having errors. IBM owns U.S. Patent No. 7,631,346, entitled "Method and System for a Runtime User…
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