The Federal Circuit has spent the past few years applying the Supreme Court's most recent precedent, Nautilus, Inc. v. Biosig Instruments, Inc., on the indefiniteness standards in the patent statute. 35 U.S.C. § 112(b). The...more
PATENT CASE OF THE WEEK - HZNP Medicines LLC v. Actavis Laboratories UT, Inc., Appeal Nos. 2017-2149, et al. (Fed. Cir. Oct. 10, 2019) - In a lengthy decision following a bench trial, the Court addressed a matter of...more
The legal meaning of the transition language “consisting essentially of” is well-established in Federal Circuit case law and is generally construed to mean that the composition or formulation (a) necessarily includes the...more
Under the U.S. Patent laws, claims must particularly point out and distinctly claim what the inventor understands her invention to be. Up until three years ago, the inquiry for determining indefiniteness was to ask whether...more
In a recently issued claim construction order, Chief Administrative Law Judge Bullock held that terms included in all asserted claims are indefinite. He accordingly found the asserted claims invalid, stayed the Investigation,...more
Clarifying the application of the indefiniteness standard set forth in the Supreme Court’s Nautilus case, a divided U.S. Court of Appeals for the Federal Circuit denied a combined petition for rehearing and rehearing en banc...more
Federal Circuit Remands Record Damages Award For New Trial On Extraterritorial Sales - In Carnegie Mellon University v. Marvell Technology Group, Ltd., Appeal No. 2014-1492, the Federal Circuit reversed a damages award...more
Addressing the post-Nautilus indefiniteness standard, the U.S. Court of Appeals for the Federal Circuit reversed a jury’s finding that the claims-at-issue are not indefinite and similarly reversed an associated order granting...more
In Dow Chemical Co. v. Nova Chemicals Corp., the Federal Circuit held claims reciting a limitation that could be calculated in several ways indefinite where the patent claims, specification, and prosecution history failed to...more
Dow Chemical Company (“Dow”) lost a ruling that competitor NOVA Chemical Corporation and NOVA Chemicals Inc. (collectively “NOVA”) infringed claims of two Dow patents when the Federal Circuit applied the U.S. Supreme Court’s...more
It has been a little more than a year since the Supreme Court rendered its decision in Nautilus, lowering the standard for finding patent claim terms indefinite. Many commentators at that time predicted the decision would...more
In an opinion addressing the standard for indefiniteness in view of the Supreme Court of the United States’ 2014 “reasonable certainty” test, the U.S. Court of Appeals for the Federal Circuit maintained its reversal of the...more
FEDERAL CIRCUIT CASES - Subjective Term Not Indefinite when Intrinsic Record Provides Reasonably Certain Scope - On remand from the Supreme Court, on April 27, 2015, the Federal Circuit reassessed whether...more
Biosig Instruments, Inc. v. Nautilus, Inc. (No. 2012-1289, 4/27/15) (Newman, Schall, Wallach) - April 27, 2015 11:12 AM. Wallach, J. On remand from the Supreme Court, reversing district court summary judgment...more
TEVA PHARMACEUTICALS: IS IT TIME TO RETHINK HOW YOU WILL ARGUE CLAIM CONSTRUCTION? The United States Supreme Court decided in Teva Pharmaceuticals USA Inc. v. Sandoz Inc. that the Federal Circuit must review all...more
Congress v SCtPatent litigation reform has been on the U.S. House Judiciary Committee agenda, with the recent reintroduction of legislation seeking to address patent litigation abuses and a hearing examining recent U.S....more
In 1982, the U.S. congress formed a new specialised appeals court, the Court of Appeals for the Federal Circuit, or “CAFC,” and transferred responsibility for patent appeals from the various regional courts of appeal to this...more
Well, 2014 was a busy year in patent law, and it wasn’t all good news for patent holders. The Supreme Court made 35 USC § 101 a significant hurdle to patenting inventions across a broad swath of technologies, gave more teeth...more
In This Presentation: - Recent Patent Cases From The Supreme Court - Medical Device Patent Statistics and Cases - USPTO Post-Grant Proceedings: Lessons Learned After Two Years - Excerpt from Recent Cases...more
The Supreme Court recently “conclude[d] that the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute’s definiteness requirement.” Nautilus, Inc. v. Biosig...more
Supreme Court Sets New Indefiniteness Standard - In Nautilus, Inc. v. Biosig Instruments, Inc., Appeal No. 13-169, the Supreme Court vacated and remanded Federal Circuit’s reversal of summary judgment because the...more
New Nautilus Indefiniteness Standard Justifies Submission of Expert Evidence at Markman Hearing - The court granted defendants' motion to supplement their claim construction briefing with an expert declaration...more
A very experienced patent attorney once told me that you should never write means-plus-function claims unless there is a Luger at your temple. This, the first opinion addressing indefiniteness to come from the Federal...more
The Supreme Court's decision in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369 (2014) appeared to raise the bar for patent clarity. However, the true effects of the decision will not be seen for some time, if ever. In...more
In the recent cases OCTANE FITNESS, LLC v. ICON HEALTH & FITNESS, INC. and HIGHMARK INC. v. ALLCARE HEALTH MANAGEMENT SYSTEM, INC., the U.S. Supreme Court empowered district court judges to award attorney fees to prevailing...more