Patent Law Weblog
recent posts
- 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: Written Description
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By Kevin E. Noonan — Interferences are not yet dead, although their echo is expected to attenuate over the next decade or so as a result of the provisions of the Leahy-Smith America Invents Act that converted the U.S. from a first-to-invent country to a first-inventor-to-file country. In Tobinick v. Olmarker, the Federal Circuit addressed…
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Barr does not infringe, Alcon's patents not invalid By Kevin E. Noonan — In ANDA litigation between branded drug maker Alcon Research and generic drugmaker Barr Laboratories, the Federal Circuit affirmed a District Court finding of non-infringement and reversed a finding of invalidity for failure to satisfy either the enablement or written description requirements of…
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By Kevin E. Noonan — The Federal Circuit issued an opinion on Monday in GlaxoSmithKline LLC v. Banner Pharmacaps, Inc. illustrating how difficult it can be to overturn a district court determination based on a question of fact, at least when the question involves a chemical compound defined by structural properties supported by a description…
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By Andrew Williams — The standard of review at the Federal Circuit is important. Even though it often appears like cases are re-litigated at the Appeals Court, it is actually very difficult (or at least should be) to overturn a lower court's factual determinations. This is especially true for a finding that a patent was…
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By Kevin E. Noonan — The Patent Trial and Appeals Board (PTAB), a creation of the Leahy-Smith America Invents Act that replaced the Board of Patent Appeals and Interferences (BPAI) overruled the Reexamination Unit's decision that the claims of U.S. Patent No. 6,777,231 were invalid for failing to satisfy the written description and enablement requirements…
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By Kevin E. Noonan — From the opening sentence of the Federal Circuit's opinion, it is clear that the Court believed that Bayer had claimed more broadly than it was entitled to and claimed species it had not described, thus failing to satisfy the written description requirement. Regents of Univ. of Cal. v. Eli Lilly…
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By Andrew Williams — Last week, in Pozen Inc. v. Par Pharmaceutical, Inc., the Federal Circuit affirmed the decision of the U.S. District Court for the Eastern District of Texas that two patents that describe treating migraines by combining two known drugs in a single dose had not been shown to be obvious or inadequately…
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By Andrew Williams — Last week, the Federal Circuit partially overturned the U.S. District Court for the District of Delaware's decision in Santarus, Inc. v. Par Pharmaceutical, Inc., thereby allowing Santarus to keep Par's generic version of Zegerid® off the market until the expiration of the Orange Book-listed patents. Judge Newman provided a separate opinion,…
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By Andrew Williams — In a sequel of sorts to the hugely popular Streck, Inc. v. Research & Diagnostic Systems, Inc. (Fed. Cir. 2011), the Federal Circuit released Streck II (Streck, Inc. v. Research & Diagnostic Systems, Inc. (Fed. Cir. 2012)) earlier this month. Not to be upstaged by the original, this ambitious follow-up leaves…
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By Kevin E. Noonan — As discussed yesterday, a panel of the Federal Circuit seemingly expanded the scope of the written description requirement in its Boston Scientific Corp. v. Johnson & Johnson decision. At issue was the extent of disclosure required for combination claims, i.e., inventions combining components known in the art to produce a…
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