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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
Federal Circuit Holds That the Preamble of Jepson-Style Claims Must Be Supported by an Adequate Written Description - U.S. patent claims have a preamble, and, in most cases, the preamble is not limiting. Jepson-style...more
Denosumab Challenged Claim Types in Litigation: Claims are counted in each litigation, so claims from the same patent challenged in multiple litigations are counted more than once. Within each litigation a claim is counted...more
Lashify, Inc. is an American company, with headquarters and employees in the United States, that distributes, markets, and sells eyelash extensions (and cases and applicators for the eyelash extensions) in the United States....more
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board patentability finding, explaining that an anticipation analysis for a product-by-process claim focuses on the product and not the process....more
On June 7, 2024, the Federal Court issued its Judgment and Reasons in Tekna Plasma Systems Inc v AP&C Advanced Powders & Coatings Inc ( 2024 FC 871), finding all claims of the Defendant’s Canadian Patent No 3,003,502 (502...more
In this edition of The Precedent, we outline the decision in Steuben Foods Inc. v. Shibuya Hoppmann Corp. This case addresses whether the reverse doctrine of equivalents (RDOE) is a viable defense to patent infringement....more
In a Jan. 10 precedential ruling by the United States Court of Appeals for the Federal Circuit, the validity of the U.S. patent covering Novartis’s blockbuster drug Entresto was upheld, reversing an earlier decision by the...more
Exeltis USA, Inc. and other parties (Exeltis) recently prevailed against Lupin Ltd. and Lupin Pharmaceuticals, Inc. (Lupin) in a patent infringement suit brought in the District of Delaware. After a three-day bench trial, the...more
The US Court of Appeals for the Federal Circuit found the patents at issue invalid based on the patent owner’s “quotation” letter to a third party, concluding it was a commercial offer for sale under pre-America Invents Act...more
The hypothetical person with ordinary skill in the art will have a certain amount of requisite experience in the subject matter of the patent at the time of the invention of the patent....more
In Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., the Federal Circuit recently affirmed two PTAB decisions in IPRs filed by Pacific Biosciences of California, Inc. (PacBio) that challenged a...more
The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s patentability determination, finding that the patent challenger waived an argument it attempted to incorporate by reference to another...more
In August 2023, one complainant filed a new complaint for a violation of Section 337 in the International Trade Commission. Specifically, on August 22, NJOY, LLC, filed a complaint against JUUL Labs, Inc., in Vaporizer...more
On remand from the Supreme Court, the US Court of Appeals for the Federal Circuit reconsidered the boundaries of the doctrine of assignor estoppel. The Federal Circuit found that the patent assignor was estopped from...more
Intel Corp. petitioned for six inter partes reviews (IPRs) challenging the validity of U.S. Patent No. 9,608,675, a patent directed to power management in wireless devices. In each proceeding, Intel and patent-owner Qualcomm...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held in a precedential opinion that expert witnesses must at least have ordinary skill in the art. Because Kyocera’s expert did not...more
In an appeal, Novartis Pharmaceuticals v. Accord Healthcare, Inc., the issue of whether a patent provides sufficient written description of a negative limitation split the panel at the Federal Circuit. Novartis...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
Kannuu Pty Ltd. v. Samsung Electronics Co., Appeal No. 2021-1638 (Fed. Cir. Oct. 7, 2021) - In our Case of the Week, the Federal Circuit addressed whether a forum selection clause in an NDA may prohibit a party from...more
[co-author: Jay Bober, Summer Associate] The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for...more
Don’t Panic - Facing an inter partes review (IPR) challenge is a new experience for many patent owners, even though IPRs have quickly become a preferred avenue for accused infringers and other interested parties to challenge...more
Update: Wyeth’s appeal was discontinued. On April 30, 2021, the Federal Court issued its decision relating to the validity of three patents relating to Pfizer’s PREVNAR 13, a 13-valent pneumococcal polysaccharide protein...more
Claim construction is the heart of validity and infringement for almost every patent proceeding. Yet, at least two recent cert petitions brought from separate cases by Intel and Akeva have argued the Federal Circuit has two...more