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Patent Prosecution History

Mintz - Intellectual Property Viewpoints

Expediting Patent Prosecution with the Newly Extended Collaborative Search Pilot Program

On February 4, 2021 the U.S. Patent and Trademark Office (USPTO) extended for two years the expansion of the Collaborative Search Pilot Program (CSP), which began in 2015 and is now scheduled to end October 31, 2022. The CSP...more

Smart & Biggar

Federal Court finds silodosin formulation patent valid but not infringed

Smart & Biggar on

On December 24, 2020, the Federal Court issued a decision in a patent infringement action pursuant to s. 6(1) of the Patented Medicines (Notice of Compliance) Regulations relating to silodosin (Allergan’s RAPAFLO): Allergan...more

Jones Day

PTAB Adopts Nautilus Indefiniteness Standard

Jones Day on

In post-grant proceedings since 2018, the PTAB has applied the same claim construction standard as used in district court; a recent Memorandum confirms the PTAB will likewise apply the same standard that district courts use...more

McDonnell Boehnen Hulbert & Berghoff LLP

Horizon Pharma, Inc. v. Dr. Reddy's Laboratories Inc. (Fed. Cir. 2021)

Indefiniteness under U.S. patent law is a failure to satisfy the statutory requirements of 35 U.S.C. § 112(b), which reads:  "The specification shall conclude with one or more claims particularly pointing out and distinctly...more

McDonnell Boehnen Hulbert & Berghoff LLP

Vectura Ltd. v. GlaxoSmithKline LLC (Fed. Cir. 2020)

Trial courts tend to get more than the benefit of the doubt when their decisions are viewed under the "abuse of discretion" standard, and juries similarly are affirmed unless there isn't substantial evidence supporting their...more

McDonnell Boehnen Hulbert & Berghoff LLP

Sherwin-Williams Co. v. PPG Industries, Inc. (W.D. Pa. 2020)

Earlier this month, in Sherwin-Williams Co. v. PPG Industries, Inc., Special Master Henry M. Sneath issued a Report and Recommendation in the U.S. District Court for the Western District of Pennsylvania that a motion by...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Does the Term “Human Antibody” Include Humanized Antibodies?

In the context of Immunex’s patent on IL-4 antibodies, the Federal Circuit says yes. On October 13, 2020, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (the “Board”) final written decision in...more

Knobbe Martens

Federal Circuit Review - August 2020

Knobbe Martens on

Claims Covering Human Engineering That Exploit a Naturally-Occurring Phenomenon Are Patent Eligible - In Illumina, Inc. V. Ariosa Diagnostics, Inc., Appeal No. 19-1419, the Federal Circuit modified its earlier decision...more

Haug Partners LLP

The Federal Circuit Says Prosecution History Was Insufficient to Overcome the Claims and Written Description for Claim...

Haug Partners LLP on

Baxalta Inc. v. Genentech, Inc., 2019-1527, (Fed. Cir. Aug 27, 2020) - In an appeal from the District of Delaware, the Federal Circuit (Judges Moore, Plager, and Wallach) vacated and remanded the district court’s judgment...more

Akin Gump Strauss Hauer & Feld LLP

Focusing on the Language Used in the Claims, the Federal Circuit Vacates a District Court’s Construction of the Terms “Antibody”...

The Federal Circuit recently vacated a district court’s construction of the terms “antibody” and “antibody fragment.” The court’s constructions were not consistent with the claim language, and nothing in the specification or...more

Knobbe Martens

Imaginary Slice of Accused Product Failed to Satisfy Structural Claim Limitation

Knobbe Martens on

NEVILLE v. FOUNDATION CONSTRUCTORS, INC. Before Lourie, O’Malley, and Chen. Appeal from the United States District Court for the Central District of California. Summary: The Federal Circuit affirmed a construction of...more

Knobbe Martens

Federal Circuit Review - July 2020

Knobbe Martens on

Unconstitutionally Appointed Judges Cannot Decide Ex Parte Appeals - In In Re Boloro Global Limited, Appeal No. 19-2349, When administrative patent judges are unconstitutionally appointed, their decisions in ex...more

Knobbe Martens

The Definition of “Half-Liquid” Is Only Half Baked

Knobbe Martens on

IBSA INSTITUT BIOCHIMIQUE, S.A. V. TEVA PHARMACEUTICALS USA, INC. Before Prost, Reyna, and Hughes. Appeal from the District Court of Delaware - Summary: A term may be indefinite when the proposed construction is not...more

Akin Gump Strauss Hauer & Feld LLP

District Court: Prosecution History Context Defeats Written Description Requirement

The District Court for the Northern District of West Virginia recently found method of treatment claims directed to treating a specific disease at a specific dose invalid for lack of written description based on the context...more

Knobbe Martens

Disclaimer Not Required for Prosecution History to Limit Claim Scope

Knobbe Martens on

PERSONALIZED MEDIA COMMUNICATION, LLC v. APPLE INC - Before Reyna, Taranto and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: Prosecution history evidence need not rise to the level of disclaimer to...more

Brownstein Hyatt Farber Schreck

Federal Circuit Infers Disavowal, Limiting Scope of Chamberlain Patent

The Federal Circuit has issued another opinion arising from the patent conflict between The Chamberlain Group and Techtronic Industries—and, once again, a patent owned by Chamberlain suffered a major blow. In Techtronic...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Strikes from IPR Record References Introduced After Institution that Purportedly Showed State of the Art

The Patent Trial and Appeal Board has granted in part a Patent Owner’s motion to strike Petitioner’s Reply for improperly raising new arguments and citing new evidence. The Board, however, declined to throw out the entirety...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - September 2019: Words Matter in a Design Patent

It is important for petitioners and patent owners alike to understand the implications of Curver Luxembourg v. Home Expressions, which relied on prosecution history and the title to limit design patent claim scope....more

McDermott Will & Emery

Sharp Turnaround on Applicability of § 112, ¶6 Analysis

McDermott Will & Emery on

Addressing the applicability of 35 USC § 112, ¶6 to the term “mechanical control assembly,” the US Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board (PTAB) gave undue weight to the patent’s...more

McDermott Will & Emery

When Is “Wherein” Clause Limiting? When It’s Material to Patentability

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a district court’s finding, based largely on the prosecution history, that disputed “wherein” clauses were limiting and therefore the grant of a preliminary injunction...more

Smart & Biggar

Foreign Prosecution History Evidence Permitted under Section 53.1 of the Patent Act

Smart & Biggar on

The Federal Court has now released the first decision in which the scope of Section 53.1 of the Canadian Patent Act—the so-called “file wrapper estoppel” provision—has been considered. We recently published an IP Update...more

Smart & Biggar

File wrapper estoppel in Canada

Smart & Biggar on

The Canadian Patent Act was amended last year to include a new provision which allows prosecution histories into evidence in patent proceedings to rebut representations made by the patentee regarding claims construction. ...more

Knobbe Martens

Federal Circuit Finds That a Variant Polypeptide Sequence Infringes Under the Doctrine of Equivalents

Knobbe Martens on

Ajinomoto Co., Inc. vs. CH Cheiljedang Corp. (2018-1590, 2018-1629) - In a pair of cross-appeals from the International Trade Commission, the Federal Circuit affirmed the Commission’s ruling that one of CJ CheilJedang...more

Mintz - Intellectual Property Viewpoints

Representations Made by a Patentee during Foreign Prosecution May Be Used in Claim Construction for U.S. Patents

Claim construction, the process by which a court interprets the scope and meaning of a patent’s claims, is a crucial part of patent litigation. In fact, claim construction can make or break a patentee’s case for infringement...more

Knobbe Martens

The Doctrine of Equivalents May Apply Despite Restriction Requirements and Narrow Claiming

Knobbe Martens on

UCB, INC. v. WATSON LABORATORIES INC. Before Taranto, Schall, and Chen. Appeal from the United States District Court for the District of Delaware. Summary: Application of the doctrine of equivalents may not be barred...more

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