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The Federal Circuit issued a precedential opinion on March 4, 2025, that serves as valuable guidance for product-by-process claims, particularly in the context of inherency in claim construction. In Restem, LLC v. Jadi Cell,...more
Limits of Inherent Anticipation in Product-by-Process Claims - In Restem, LLC v. Jadi Cell, LLC, Appeal No. 23-2054, the Federal Circuit held that inherency in product-by-process claims requires the prior art to inevitably...more
The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s determination that 79 challenged composition claims across three related patents were unpatentable but reversed the Board’s...more
The January 29, 2020, Federal Circuit decision in Galderma Laboratories, L.P. v. Teva Pharmaceuticals USA, Inc., is a non-precedential decision that was issued on the briefs (without oral argument), but is worth reviewing for...more
Key Points - Federal Circuit issued precedential opinion in Hospira Inc. v. Fresenius Kabi USA, LLC that affirmed obviousness of a liquid drug patent claim, encouraging future patent challengers to raise the issue of...more
HOSPIRA, INC. V. FRESENIUS KABI USA, LLC - Before Lourie, Dyk, and Moore. Appeal from the U.S. District Court for the Northern District of Illinois. Summary: Evidence of the properties of claimed embodiments may be...more
Just Because Something May Result From a Prior Art Teaching Does Not Make it Inherent in that Teaching - In Personal Web Technologies, LLC v. Apple, Inc., Appeal No. 2018-1599, the Federal Circuit clarified that the mere...more
On a second appeal from an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) determination that a patent directed to creating a...more
Before Moore, Taranto, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: The mere fact that a certain thing may result from a given set of circumstances is not sufficient to demonstrate inherency. Instead,...more
PATENT CASE OF THE WEEK - PersonalWeb Techs., LLC v. Apple, Inc., Appeal No. 2018-1599 (Fed. Cir. March 8, 2019 - In a second appeal in this inter partes review matter, the Federal Circuit reversed the PTAB’s finding of...more
Among the many differences from a patent litigation in a district court, the expedited nature of an inter partes review (IPR) brings with it an obligation for the petitioner to have a full-fledged legal theory of its case...more
The US Court of Appeals for the Federal Circuit upheld a district court finding that the patent challenger failed to prove that patents directed to a testosterone replacement injection therapy were valid and non-obvious. Endo...more
In Endo Pharmaceuticals Solutions, Inc. v. Custopharm Inc., the Federal Circuit affirmed the district court’s finding that two patents listed in the Orange Book for Aveed® had not been shown to be obvious. Although prior art...more
Where Parties Raise an Actual Dispute Regarding Claim Scope, the Court Must Resolve It In Nobelbiz, Inc. v. Global Connect, L.L.C., Appeal Nos. 2016-1104, 2016-1105, the Federal Circuit held that where parties raise an actual...more
In prior blog postings, we have commented on PTAB decisions regarding the standards for demonstrating inherent obviousness. Practitioners should also be aware of a recent Federal Circuit decision clarifying the test is...more
Despite an error by the Patent Trial and Appeal Board (PTAB or Board) in relying on inherency to render an obviousness determination, the US Court of Appeals for the Federal Circuit affirmed the PTAB decision, finding...more
In recent decisions, the Federal Circuit has found error in the USPTO Patent Trial and Appeal Board’s approach to obviousness rejections, including its reliance on the doctrine of routine optimization without evidence of an...more
In Southwire Co. v. Cerro Wire LLC, the Federal Circuit upheld the USPTO decision rendered in an inter partes reexamination proceeding that found Southwire’s patent invalid as obvious. Although the court found that the USPTO...more
Intercontinental v. Kellogg involves a fight between two food industry powerhouses, Kraft and Kellogg, in which a majority of the panel affirms summary judgment of obviousness of a patent directed to a resealable cookie...more
In Honeywell v. Mexichem the Circuit vacates a Board determination of obviousness, ruling that the Board improperly relied on inherency, appeared to shift the burden of nonobviousness to the patentee, and violated the APA by...more
A patent claim can be rejected for inherency over a reference. An inherent property cannot be claimed, even if that property was not known at the time a prior art composition was disclosed or prior art invention was made....more
On February 3, 2017, the PTAB denied a petition by Amneal Pharmaceuticals LLC (“Amneal”) to institute an inter partes review of Hospira Inc.’s patent directed to pharmaceutical compositions of the sedative dexmedetomidine...more
In Allergan, Inc. v. Sandoz, Inc., the Federal Circuit affirmed the district court decision that upheld the validity of the Allergan patents relating to Lumigan® 0.01% glaucoma eye drops against obviousness, written...more
In Allergan, Inc. v. Sandoz, Inc., the Federal Circuit affirmed the district court decision that upheld the validity of the Allergan patents relating to Lumigan® 0.01% glaucoma eye drops. This decision shows that it is still...more
In December of last year, the Federal Circuit vacated and remanded the U.S. District Court for the District of Maryland’s (“the Court”) decision finding U.S. Patent No. 7,101,576 (“the ‘576 patent”) invalid as obvious. See...more