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 — The Federal Circuit, in its third opinion involving ANDA litigation between these parties over Shire's LIALDA® (mesalamine) product, has apparently brought this case to a close in generic drug maker Watson's favor, in a decision handed down last Friday. The lawsuit involved Watson's ANDA filing seeking approval for a generic…
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By Kevin E. Noonan — The patent prosecutor's art requires exquisite foresight, if not prescience, in balancing the requirements for specificity needed to satisfy the disclosure requirements of § 112 while anticipating efforts to design around the claimed invention. In a recent nonprecedential opinion, the Federal Circuit illustrated the consequences when these efforts prove inadequate,…
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By Kevin E. Noonan — The Federal Circuit recently affirmed a district court's claim construction and determination that claim terms were not indefinite in Massachusetts Institute of Technology v. Shire Pharmaceuticals, Inc. The case involved U.S. Patent Nos. 5,770,193 and 5,759,830, directed to three-dimensional scaffolds for growing cells in vitro for in vivo organ culture. …
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By Kevin E. Noonan — The complexities that can be attendant on defending against an infringement allegation, and the possibility that a straightforward path to non-infringement can be complicated by claim construction even for terms construed using their plain meaning, are illustrated in the Federal Circuit's opinion affirming a jury verdict of infringement in LifeNet…
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By Donald Zuhn — Today, in UCB, Inc. v. Yeda Research and Development Co., the Federal Circuit affirmed the determination by the District Court for the Eastern District of Virginia that UCB's Cimzia® brand antibody does not infringe Yeda's U.S. Patent No. 6,090,923. In affirming the District Court's grant of summary judgment of non-infringement, the…
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PTAB Ignores District Court Claim Construction, Finds Patent Invalid By Joseph Herndon — On February 19, 2016, the USPTO Patent Trial and Appeal Board (PTAB) issued a final written decision in the Covered Business Method (CBM) patent review between Mitchell International, Inc. and Audatex North America, Inc. in which all challenged claims were found to…
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Despite Amendments during Reexamination, Intervening Rights Not Found By Joseph Herndon — On February 10, 2016, the Federal Circuit issued an opinion in a case captioned Convolve, Inc., and Massachusetts Institute of Technology v. Compaq Computer Corp., Seagate Technology, Inc., and Seagate Technology, LLC. This case has been before the Federal Circuit previously, and returns…
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Lesson for Defendant-Appellee's: Provide Responsive Arguments on Appeal By Joseph Herndon — On January 29, 2016, the Federal Circuit issued an Opinion in Avid Technology, Inc. v. Harmonic, Inc. in which the judgment of the District Court was vacated, and the case was remanded for a new trial on infringement. Avid asserted two patents against…
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By Kevin E. Noonan — The Supreme Court on Friday granted certiorari to review the Federal Circuit's decision that the U.S. Patent and Trademark's Patent Trial and Appeal Board was entitled to perform claim construction in inter partes review proceedings using the broadest reasonable interpretation standard. This case, Cuozzo Speed Technologies, LLC v. Lee, has…
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Claim Terms Not Limited to Specific Embodiment By Joseph Herndon — In Inline Plastics Corp. v. EasyPak, LLC, the Federal Circuit offered some bits of wisdom for patent application specification drafting, while applying well-known case law to conclude that claims are not limited to a specific embodiment when the specification includes a broader disclosure. Inline…
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