Category: Uncategorized

By Michael Borella and Walter DeGroft[1] – For the fifth consecutive year, we have surveyed how the Patent Trial and Appeal Board (PTAB) decides appeals of § 101 rejections from examiners.  Readers of the previous installments will know the drill by now.  Applicants who appeal a subject matter eligibility rejection to the PTAB have historically…

By Kevin E. Noonan – In a nonprecedential opinion, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board that the claim challenged in an ex parte reexamination was invalid for anticipation in In re Magnolia Medical Technologies, Inc. The appeal involved the ex parte reexamination of U.S. Patent No. 10,039,483, wherein…

By Michael Borella – More than a decade after Alice Corp. v. CLS Bank Int’l, the two-step framework for patent eligibility under 35 U.S.C. § 101 remains as contentious as ever.  Courts, commentators, and the U.S. Patent and Trademark Office have all acknowledged the difficulty of applying a test that turns on undefined terms such…

By Kevin E. Noonan – The Federal Circuit affirmed a District Court determination that method claims reciting administration of a modification of an established antibiotic by adding magnesium to the composition were infringed and not invalid in Melinta Therapeutics, LLC v. Nexus Pharmaceuticals, Inc. The case arose as ANDA litigation over Nexus Pharma’s generic version…

By Michael Borella –

By Donald Zuhn – The U.S. Patent and Trademark Office has published a final rule in the Federal Register (an unpublished version of the notice, which will be published on June 24, can be found here), in which the Office states that it is “revising its practice of requiring additional information for delays in taking…

By Kevin E. Noonan – In a nonprecedential opinion, the Federal Circuit reviewed summary judgment granted to accused infringer Abiomed that claims asserted by Maquet Cardiovascular LLC were not infringed, in Abiomed Inc. v. Marquet Cardiovascular LLC. The case arose over claims to intravascular blood pump systems and methods for using them to provide heart…

By Kevin E. Noonan – In a nonprecedential decision, the Federal Circuit recently affirmed a district court’s finding that innovator drugmaker Otsuka Pharmaceutical failed to show generic competitor Lupin infringed (or would infringe, if it marketed an FDA-approved generic version of Otsuka’s JYNARQUE® drug), the claims of U.S. Patent No. 8,501,730 and that Lupin had…

The Supreme Court issued an Order this morning denying certiorari in Newman v. Moore.  The Court’s Order states that:

By Kevin E. Noonan – At the beginning of June, the New Civil Liberties Alliance (representing Judge Paulene Newman) filed the Judge’s Reply Brief to the Federal Circuit Judicial Council’s Opposition to her Petition for Certiorari*.  The brief specifically identifies Judge Newman’s argument that prospective relief is not foreclosed by the Judicial Councils Reform and…