Patent Law Weblog
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- 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)
- To Require an Inventor ID, or Not to Require an Inventor ID – That Is the Question
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Category: Novelty
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By Kevin E. Noonan — In an otherwise unremarkable case of a PTO rejection based on anticipation, Judges Dyk and Lourie engaged in an interesting colloquy on the proper interpretation of what constitutes inherent anticipation, in In re Montgomery. The case involved claims to methods for "treating or preventing" stroke, using "renin-angiotensin system (RAS)" inhibitors,…
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By Donald Zuhn — Last month, in In re Mousa, the Federal Circuit affirmed a decision by Board of Patent Appeals and Interferences sustaining the invalidity of U.S. Application No. 10/667,216 for anticipation and obviousness. The '216 application is directed to chemically fractured and modified heparin. Heparin, an anticoagulant typically used to prevent blood clots…
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By Andrew Williams — Last week, in Teva Pharma. Indus. Ltd. v. AstraZeneca Pharma. LP, the Federal Circuit reiterated that, in the context of 35 U.S.C. § 102(g), "[t]o establish prior invention, the party asserting it must prove that it appreciated what it had made." The complication is, however, how do you define what the…
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By Kevin E. Noonan — The Federal Circuit reaffirmed the primacy of the factual disclosures used to establish obviousness, and how deficiencies thereof can defeat an obviousness claim, in reversing an invalidity determination in Star Scientific, Inc. v. R.J. Reynolds Tobacco Co. It also showed how persistently defendants pursue the tarnish of inequitable conduct even…
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By Donald Zuhn — Yesterday, the Federal Circuit affirmed a decision by the District Court for the Southern District of New York finding that Defendants-Appellants Barr Laboratories, Inc. and Pliva-Hrvatska d.o.o. ("Barr") infringed U.S. Patent No. 5,214,052. The '052 patent, which is assigned to Plaintiff-Appellee Mitsubishi Chemical Corp., relates to argatroban solutions containing ethanol, water,…
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By Donald Zuhn — Last week, in Billups-Rothenberg, Inc. v. Associated Regional and University Pathologists, Inc., the Federal Circuit determined that the District Court for the Central District of California had properly granted summary judgment of invalidity with respect to U.S. Patent Nos. 5,674,681 and 6,355,425. In particular, the panel affirmed the District Court's decision…
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Inherent Anticipation and Inherent Obviousness? By Andrew Williams — Last week, in King Pharmaceuticals, Inc. v. Eon Labs, Inc., the Federal Circuit affirmed a grant of summary judgment of invalidity of U.S. Patent Nos. 6,407,128 (the "'128 patent") and 6,683,102 (the "'102 patent"), although not necessarily for the same reasons articulated by the U.S. District…
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By Donald Zuhn — On March 26, the Federal Circuit reversed the judgment of the District Court for the District of Connecticut that U.S. Patent Nos. 5,328,824 and 5,449,767 are invalid, affirmed the judgment of the District Court that U.S. Patent No. 5,476,928 is anticipated, and affirmed the judgment of the District Court that…
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By Kevin E. Noonan — Albeit a bit anticlimactically, a study published in the journal Genomics assesses the patentability of one of the claims invalidated on Monday by Judge Robert W. Sweet of the Southern District of New York in Association of Molecular Pathology v. U.S. Patent and Trademark Office. The study is interesting…
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By Donald Zuhn — The Federal Circuit today vacated-in-part and affirmed-in-part an order by the District Court for the District of New Jersey granting summary judgment of invalidity of U.S. Reissued Patent No. 39,221 based on anticipation and obviousness. Plaintiff-Appellant Ortho-McNeil Pharmaceutical, Inc. owns the '221 patent, which relates to a tramadol and acetaminophen…
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