News & Analysis as of

Patent Litigation POSITA

Foley & Lardner LLP

Federal Circuit Says No Timing Requirement To Qualify As A POSITA

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Last week, in Osseo Imaging, LLC v. Planmeca USA Inc., No. 2023-1627 (Fed. Cir. Sept. 4, 2024), the Federal Circuit held that “[a]n expert need not have acquired the skill level prior to the time of the invention to be able...more

McDermott Will & Emery

Back to the Future: Expert Can Be Skilled Artisan Based on Later-Acquired Knowledge

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The US Court of Appeals for the Federal Circuit clarified that a technical expert does not need to have been a person of ordinary skill in the art (POSITA) at the time of the invention. Instead, they may rely on...more

Akin Gump Strauss Hauer & Feld LLP

District Court Precludes Experienced Patent Attorney from Testifying as Expert Based on Lack of Pertinent Technical Expertise

A district court recently precluded a patent attorney from testifying as an expert in a patent infringement lawsuit where the proposed expert lacked the requisite technical expertise to assist the trier of fact in...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Rules on Written Description Requirement and Prior Art Statements Supporting a Motivation to Combine

RAI Strategic Holdings, Inc. v. Phillip Morris Products S.A., No. 2022-1862 (Fed. Cir. February 9, 2024) addressed two issues: (1) when the written description requirement is met in the context of a claimed range that is...more

Jones Day

PTAB Doubles Down on Interference Estoppel Issue

Jones Day on

The Patent Trial and Appeal Board held all challenged claims of IGT’s patent unpatentable as obvious over two prior art patents. Zynga Inc. v. IGT, IPR2022-00199-32. In doing so, the PTAB further held that, contrary to...more

McDonnell Boehnen Hulbert & Berghoff LLP

Broad Files Reply Brief in Interference No. 106,115 Cross-Appeal

In its contingent cross-appeal from the Patent Trial and Appeal Board's (PTAB) adverse decision on priority against Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier...more

McDonnell Boehnen Hulbert & Berghoff LLP

Am I sunk? Where are all the safe harbors against the “on sale” bar?

In part 1 of this series, I introduced the “on sale bar” and described how a commercial sale or offer for sale can negate patentability, according to the doctrine the Supreme Court established in Pfaff v. Wells Elecs., Inc....more

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (March 13 – March 17): A reminder that motivation doesn’t need to be found in the prior art...

The Court had a busy week as the weather begins to turn, and those with school-aged kids begin to plan for spring break. This week we look at the Court’s latest reminder that obviousness is a flexible analysis, so below we...more

Smart & Biggar

Lilly’s CIALIS patent claims extending to “physiologically acceptable salt” found invalid for overbreadth and insufficiency

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On October 17, 2022, Justice St-Louis of the Federal Court granted a motion for summary trial brought by Teva, Pharmascience, Laboratoire Riva, Apotex and Mylan (the Defendants) and dismissed the underlying actions of Lilly...more

Morgan Lewis

USPTO Director Designates Precedential Decision on Conclusory Expert Declarations

Morgan Lewis on

Director of the US Patent and Trademark Office (USPTO) Kathi Vidal recently designated as precedential a decision by the Patent Trial and Appeal Board (PTAB) rejecting the petitioner’s invalidity challenge, since it was based...more

Manatt, Phelps & Phillips, LLP

Error in Prior Art Did Not Render Invention Obvious

In LG Electronics Inc. v. Immervision, Inc., the Federal Circuit held that an obvious error in a prior art reference was not considered a teaching. The court explained that a person of ordinary skill in the art (POSITA) would...more

Knobbe Martens

Unforced Error: An IPR Challenger Cannot Rely on an Error That a Posita Would Have Corrected

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LG ELECTRONICS INC. v. IMMERVISION INC. Before Stoll, Cunningham, and Newman, Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Where a reference contains an “obvious”...more

Haug Partners LLP

Ethicon’s Surgical Stapler Patent Held Invalid by the Federal Circuit

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In Ethicon LLC v. Intuitive Surgical, Inc., the Court of Appeals for the Federal Circuit (“CAFC”) upheld a finding from the Patent Trial and Appeal Board (“Board”) the claims of Ethicon’s patent directed to a surgical stapler...more

Robins Kaplan LLP

Novartis Pharms. Corp. v. Accord Healthcare, Inc.

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Case Name: Novartis Pharms. Corp. v. Accord Healthcare, Inc., No. 2021-1070, 2022 WL 16759 (Fed. Cir. Jan. 3, 2022) (Circuit Judges Moore, Linn, and O’Malley presiding; Opinion by O’Malley, J.; Dissenting Opinion by Moore,...more

Smart & Biggar

Angelcare and Playtex take out the trash: Diaper Genie patents are valid and infringed by Munchkin

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On April 7, 2022, the Federal Court issued its judgment and reasons in Angelcare Canada Inc et al v Munchkin Inc et al (2022 FC 507), finding that Munchkin, Inc and Munchkin Baby Canada Ltd (the “Defendants” or “Munchkin”)...more

Snell & Wilmer

Federal Circuit Rejects “Unanswered Questions” Indefiniteness Standard

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Last week, a split Federal Circuit panel reversed a decision invalidating certain computer-aided-design patent claims because the district court used an incorrect indefiniteness standard....more

Morrison & Foerster LLP - Federal Circuitry

One Last look at Patent Cases in January

Last week wrapped up a busy January for the Federal Circuit. Oral arguments returned to a telephonic format, and arguments next month will be by video (although still audio-only for the public). As the month is now in the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Sigma-Aldrich Files Substantive Preliminary Motion 1 to Change the Count in Interference No. 106,132

On November 19th, Senior Party Sigma-Aldrich filed its Substantive Preliminary Motion No. 1 in CRISPR Interference No. 106,132 (where the Broad Institute, Harvard University and MIT, collectively, "Broad" is the Junior Party)...more

Haug Partners LLP

No Clear Error to Find Lack of Written Description for a Method of Treatment Patent Despite Separate Disclosures of the Drug,...

Haug Partners LLP on

Biogen International GMBH, Biogen MA, Inc., v. Mylan Pharmaceuticals Inc. marks the Federal Circuit’s most recent interpretation of the 35 U.S.C. § 112 written description requirement in the Hatch-Waxman context. No....more

McDonnell Boehnen Hulbert & Berghoff LLP

ToolGen Files Motion to Exclude Evidence, Broad Opposes, and ToolGen Replies in Interference No. 106,126

On October 1st, Senior Party ToolGen Inc. filed its Motion to Exclude certain evidence presented by Junior Party the Broad Institute, Harvard University, and MIT (collectively, "Broad") in Interference No. 106,126.  Broad...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (November 1-5): Killing Bacteria with Light – An Unexpected Result?

Last week saw recently confirmed Judge Cunningham sitting for her first oral arguments (alongside her former boss, Judge Dyk). But we’ll have to wait a bit longer for her first authored opinion. Below we provide our usual...more

McDonnell Boehnen Hulbert & Berghoff LLP

ToolGen Files Reply Brief to CVC's Opposition to its Substantive Preliminary Motion No. 2

In June, Senior Party ToolGen filed its Substantive Preliminary Motion No. 2 to deny Junior Party the University of California, Berkeley; the University of Vienna; and Emmanuelle Charpentier (collectively, "CVC") priority...more

McDonnell Boehnen Hulbert & Berghoff LLP

ToolGen Files Opposition to Broad Preliminary Motion No. 3 to De-Designate Claims as Corresponding to Either Interference Count

On May 28th, Junior Party the Broad Institute, Harvard University, and MIT (collectively, "Broad") filed its Substantive Preliminary Motion No. 3 in CRISPR Interference No. 106,126 (where ToolGen is the Senior Party).  This...more

McDonnell Boehnen Hulbert & Berghoff LLP

ToolGen Files Opposition to CVC Substantive Preliminary Motion No. 1 for Priority Benefit

On May 20th, Junior Party the University of California, Berkeley; the University of Vienna; and Emmanuelle Charpentier (collectively, "CVC") filed its Substantive Preliminary Motion No. 1 in Interference No. 106,127 (which...more

McDonnell Boehnen Hulbert & Berghoff LLP

CVC Files Opposition to ToolGen's Substantive Preliminary Motion No. 2

In June, Senior Party ToolGen filed its Substantive Preliminary Motion No. 2 to deny Junior Party the University of California, Berkeley; the University of Vienna; and Emmanuelle Charpentier (collectively, "CVC") priority...more

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