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Category: Enablement

  • Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc. (Fed. Cir. 2008)

        By Donald Zuhn — Last week, the Federal Circuit determined that the District Court for the District of New Jersey properly construed claim 1 of U.S. Patent No. 4,513,006 to encompass Plaintiff-Appellee Ortho-McNeil Pharmaceutical, Inc.’s epilepsy drug topiramate, and affirmed the District Court’s decision to (1) permanently enjoin Defendants-Appellees Mylan Laboratories, Inc. and…

  • Pharmaceutical Res., Inc. v. Roxane Labs., Inc. (Fed. Cir. 2007)

        By Donald Zuhn — On October 26th, the Federal Circuit affirmed a District Court’s finding on summary judgment that certain claims of U.S. Patent Nos. 6,593,318 (the ‘318 patent) and 6,593,320 (the ‘320 patent) were invalid under 35 U.S.C. § 112, first paragraph, for lack of enablement. The ‘318 and ‘320 patents are…

  • Monsanto Co. v. Syngenta Seeds, Inc. (Fed. Cir. 2007)

        By Kevin E. Noonan — The Federal Circuit last week clarified two frequently-disputed areas of patent prosecution:  how to claim progeny of inventions that inherently self-replicate, and how to appropriately fulfill both the written description and enablement requirements of 35 U.S.C. § 112, first paragraph, and at the same time disclose broadly enough…

  • Ex parte Bandman (B.P.A.I. 2004)

        By Donald Zuhn — In an appeal from a final rejection of claims 3, 6, 7, 9, and 12 of U.S. Application No. 09/915,694, the Board of Patent Appeals and Interferences reversed the rejection of the claims under both the written description and enablement requirements of 35 U.S.C. § 112, first paragraph, and…