Patent Law Weblog
recent posts
- REGENEXBIO Inc. v. Sarepta Therapeutics, Inc. (Fed. Cir. 2026)
- Apple v. Squires: USPTO Director Has Unlimited Discretion on IPR Institution
- The Ghost in the Machine: Why GenAI Can Be Both a Brilliant Researcher and a Terrible Advocate
- Bayer Files Suit Against Trio of COVID-19 Vaccine Makers
- Allen v. Cooper (4th Cir. 2026)
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Category: Federal Circuit
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By Kevin E. Noonan — One of the criticisms of the post-grant review proceedings instituted under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business method review) was the (relative) unavailability of pursuing amendments during the proceedings, making them "all or none" propositions for patent owners. The Federal Circuit improved this…
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By Kevin E. Noonan — Legal creativity in argument is the lifeblood of the litigator's craft, and nowhere more than in patent litigation in view of the complexities of the law applied to technological fact. But occasionally creative arguments can be a bridge too far, which was the case regarding a claim of sovereign immunity…
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By Kevin E. Noonan — Inventorship, particularly assertion of proper inventorship, has a unique place in U.S. patent law. This is based in large part on the language of Article I, Section 8, Clause 8 of the U.S. Constitution, which gives Congress the power to grant patents "to Inventors." Ample evidence of the primacy of…
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By Kevin E. Noonan — This decision of the Federal Circuit in Dr. Falk Pharma GmbH v. GeneriCo, LLC involves disqualification due to conflict of interest of counsel representing Mylan Pharmaceuticals in three separate appeals. As set forth in the beginning of the opinion: Valeant Pharmaceuticals International, Inc. ("Valeant-CA") and Salix Pharmaceuticals, Inc. ("Salix") move…
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By Kevin E. Noonan — Earlier this month, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) that the claims of U.S. Reissue Patent No. RE38,551 challenged in inter partes review were not unpatentable for obviousness, in Mylan Pharmaceuticals Inc. v. Research Corporation Technologies, Inc. The claims of the '551…
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By Donald Zuhn –- Last week, in Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, the Federal Circuit affirmed the decision by the District Court for the District of Massachusetts, holding claims 6-9 of U.S. Patent No. 7,267,820 invalid under 35 U.S.C. § 101. The Federal Circuit also affirmed the District Court's dismissal under Fed.…
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By Kevin E. Noonan — The Federal Circuit has on several occasions taken the opportunity to address (and in doing so, flesh out) the requirements for Article III standing to appeal an adverse determination in a post-grant review proceeding (post-grant review, inter partes review, and covered business method patent review) against a Petitioner (loss of…
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By Donald Zuhn –- Last week, in In re Ikeda Food Research Co., the Federal Circuit affirmed a decision by the U.S. Patent and Trademark Office Patent Trial and Appeal Board affirming the Examiner's rejection in an ex parte reexamination of claims 22 and 23 of U.S. Application No. 12/851,668 for obviousness. On appeal before…
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By Donald Zuhn –- Last June, the Supreme Court determined that $93.4 million in lost foreign profits awarded to WesternGeco L.L.C. for infringement under 35 U.S.C. § 271(f)(2) was a permissible domestic application of 35 U.S.C. § 284, and the Court therefore reversed the Federal Circuit's reversal of the award of lost profits damages and…
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By Kevin E. Noonan — Elevation to Chief Judge in a U.S. Court of Appeals, particularly in the Federal Circuit, is frequently accompanied by an apparent mandate to place an imprimatur on the Court's decisions. This pattern has been shown consistently in this appellate court, from Chief Judge Markey through Chief Judges Michel and Rader. …
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