Patent Law Weblog
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- REGENEXBIO Inc. v. Sarepta Therapeutics, Inc. (Fed. Cir. 2026)
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Category: Federal Circuit
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By Andrew Williams — When assessing the validity of a patent, you cannot ignore the dependent claims. That was the main takeaway from the recent Federal Circuit case, Research Foundation of State University of New York v. Mylan Pharmaceuticals Inc. In that case, the lower court had invalidated all of the asserted claims of two…
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By Donald Zuhn — Last month, Consumer Watchdog filed its opening brief in an appeal of a Board decision affirming the patentability of U.S. Patent No. 7,029,913, arguing that the claims of the '913 patent are invalid because they cover ineligible subject matter and were anticipated and obvious. The appeal arises from an inter partes…
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By Andrew Williams — A claim term that can have different meanings or values depending on the method used to measure it renders the claim indefinite because it is impossible for a potential infringer to discern the boundaries of the claim. This is because it is not possible to determine whether potential infringing activity will…
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By Kevin E. Noonan — It has long been a practice in prosecuting a patent application to keep a continuation application pending during the term of any granted patent. This practice is advantageous because it permits the patentee to pursue specific claims in a later-filed application to a competitor's product that falls within the scope…
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By Kevin E. Noonan — Ever since the Supreme Court handed down its decision in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), both the U.S. Patent and Trademark Office and the courts have found it easier to render a decision that a claimed invention was obvious. While how the USPTO and the…
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By Nicole Reifman — Last week, in Smith & Nephew, Inc. v. Rea, the Federal Circuit reversed a decision of the Patent Trial and Appeal Board, finding U.S. Patent No. 7,128,744 (the '744 patent), which is owned by Synthes, to be obvious. Smith & Nephew originally submitted a request for reexamination of the '744 patent,…
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By Alison Baldwin — Just before the July 4th holiday, the Federal Circuit issued its ruling in Fresenius USA, Inc. v. Baxter International, Inc. ("Fresenius II"). The Federal Circuit framed the question at issue as: "Whether under the reexam statute, the cancellation of claims by the PTO is binding in pending district court infringement litigation." …
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By Kevin E. Noonan — In his novel My Summer in a Garden (1870), Charles Dudley Warner famously said "Politics makes strange bedfellows." That aphorism is illustrated once again in the joining of the Public Patent Foundation with eight technology transfer organizations and the Association of University of Technology Managers,* urging the Federal Circuit to…
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By Donald Zuhn — At the end of June, the U.S. Patent and Trademark Office filed its reply brief with the Federal Circuit in Exelixis, Inc. v. Rea. The appeal involves two decisions by the Eastern District of Virginia involving the impact of a Request for Continued Examination (RCE) on the calculation of patent term adjustment…
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By Kevin E. Noonan — Somewhat lost in the hubbub over the Supreme Court's ruling in AMP v. Myriad was the Federal Circuit's decision, just a few days earlier, in Organic Seed Growers & Trade Ass'n v. Monsanto Co. That case is the latest windmill tilt by Cardozo Law School's Public Patent Foundation (PubPat) over…
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