The Federal Circuit continued its recent willingness to affirm findings of infringement under the doctrine of equivalents (see, e.g., "Eli Lilly & Co. v. Hospira, Inc. (Fed. Cir. 2019)"), in Galderma Laboratories, L.P. v....more
Recently, the Federal Circuit has taken up issues relating to infringement under the doctrine of equivalents (DOE) and a related doctrine, prosecution history estoppel (PHE), that limits the scope of equivalents that can be...more
3/21/2020
/ Appeals ,
Doctrine of Equivalents ,
Eli Lilly ,
Hospira ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Petition for Writ of Certiorari ,
Pharmaceutical Patents ,
Prosecution History Estoppel ,
Tangential Relationship Test
The patent marking statute, codified at 35 U.S.C. § 287(a) appears straightforward:
Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing...more
2/26/2020
/ § 287 ,
Appeals ,
Burden of Proof ,
Component Parts Doctrine ,
Damages ,
Notice Requirements ,
Patent Infringement ,
Patent Litigation ,
Patent Marking ,
Patents ,
Remand ,
Vacated ,
Willful Infringement
There is a belief in some quarters that the most significant barrier to patent subject matter eligibility reform is an implacable opposition by companies in the high tech sector because those companies are convinced that the...more
2/19/2020
/ Biotechnology ,
CLS Bank v Alice Corp ,
Legislative Agendas ,
Mayo v. Prometheus ,
Myriad ,
Patent Infringement ,
Patent Reform ,
Patent Trolls ,
Patent-Eligible Subject Matter ,
Patents ,
Pharmaceutical Patents ,
SCOTUS ,
Technology Sector ,
Treatment Method Patents
Expert witness testimony is a frequent (almost ubiquitous) feature of patent litigation, if only because questions of the state of the art or the understanding of one having ordinary skill in the art are almost always at...more
2/10/2020
/ Abuse of Discretion ,
Admissible Evidence ,
Appeals ,
Claim Construction ,
Expert Witness ,
Eyewitness Testimony ,
Federal Rules of Evidence ,
Jury Trial ,
Motion For New Trial ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
State of the Art Defense ,
Summary Judgment ,
Unfair Prejudice ,
Witnesses
Transitional terms in patent law (conventionally, "comprising," "consisting of," and the more arcane "consisting essentially of") have their own provenance and meaning, denoting limitations that are "open" (comprising) or...more
Last week, the Federal Circuit affirmed a District Court decision (by Circuit Judge Bryson, sitting by designation) in an ANDA litigation, finding obvious claims asserted for treating patients having mild to moderate hepatic...more
The Federal Circuit had the opportunity to interpret the extent to which the provisions of 35 U.S.C. § 271(g) require the practice of the patented method that produces a product whose importation imposes infringement...more
The Federal Circuit has grappled with, divisively in some instances, the extent to which the safe harbor provisions of 35 U.S.C. § 271(e)(1) extend to activities not strictly for obtaining regulatory approval, such as...more
"Everything you say can be held against you" is a trope in crime shows from the U.S., Australia, New Zealand, the UK, and Ireland (stated in various ways), and a recent decision by the Federal Circuit regarding preclusion of...more
The Federal Circuit earlier this week affirmed a District Court's decision invalidating almost all of the claims asserted against an ANDA filer, in HZNP Medicines LLC v. Actavis Laboratories UT, Inc. Nevertheless, because a...more
One person's attempt at judicial economy can be another person's impermissible shortcut, and when it arises in the context of a summary judgment motion of noninfringement, it can amount to legal (or at least procedural) error...more
Recently, Seth Waxman and his team filed a wonderful certiorari petition in the Athena Diagnostics v. Mayo Collaborative Serv. case, which we will discuss in a forthcoming post. Using quotations from the various combinations...more
A question of sovereign immunity, which has come before the Federal Circuit in many guises of late (Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc.; Regents of the University of Minnesota v. LSI Corp.), arose again in...more
Late last month, the Federal Circuit affirmed a District Court grant of a preliminary injunction based on claim construction involving the effect of two "wherein" clauses in Allergan Sales, LLC v. Sandoz, Inc....more
The late Gilda Radner's character, Emily Latella, would consistently misapprehend something ("violins on television," "saving Soviet jewelry"), give a guest editorial on Weekend Update, and when corrected would say "Never...more
Albert Einstein once famously (albeit perhaps apocryphally) said that "[c]ompound interest is the most powerful force in the universe." Not to contradict the creator of 20th Century physics, but it is just as likely that the...more
The Federal Circuit again reviewed a determination of infringement under the doctrine of equivalents, in this instance by the International Trade Commission (ITC), again finding that one of the Supreme Court's exceptions to...more
In its decision in a consolidated appeal, Eli Lilly & Co. v. Hospira, Inc. and Eli Lilly & Co. v. Dr. Reddy's Laboratories, Ltd., the Federal Circuit had the occasion to apply the Supreme Court's distinction regarding the...more
The interplay (or perhaps utilization) of inter partes review (IPR) in ANDA litigation was illustrated by the Federal Circuit in last month's Dr. Falk Pharma GmbH v. Generico, LLC nonprecedential decision....more
Last month, the Federal Circuit affirmed decisions from four separate trials in the District of Delaware involving seven different defendants regarding validity and infringement of patents directed to an opioid addiction...more
The doctrine of equivalents, a Supreme Court-created patent doctrine of vintage similar to inequitable conduct, arose in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950) (an uncharacteristically...more
The Federal Circuit handed down its decision in Regents of the University of Minnesota v. LSI Corp. on Friday, and perhaps not surprisingly (in view of its decision last summer in Saint Regis Mohawk Tribe v. Mylan...more
There are provisions and interpretations of U.S. patent law that can be in tension depending on the circumstances under which they are argued, whether before an Examiner or during litigation. One of these is the dichotomy...more
Ever since the Supreme Court handed down its decisions in Octane Fitness, LLC v. ICON Health & Fitness, Inc. and Highmark Inc. v. Allcare Health Mgmt. Sys., Inc. about five years ago, liberalizing (or at least simplifying)...more