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Patents Written Descriptions Patent Litigation

Foley & Lardner LLP

Jepson Claim Format Does Not Avoid Written Description Scrutiny

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Current written description jurisprudence can make it difficult to obtain broad antibody patents, leading practitioners to explore alternative claiming strategies in an effort to bypass the limited scope afforded under the...more

Goodwin

The Court of Appeals for the Federal Circuit’s In Re Riggs Decision: 35 USC 102(e) Prior Art Requires Written Description Support...

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On March 24, 2025, the US Court of Appeals for the Federal Circuit (Federal Circuit) issued a decision titled In Re: Riggs (the Riggs decision) that vacated a decision of the Patent Trial and Appeal Board (PTAB) of the US...more

Cooley LLP

End of the Road for Jepson Format Claims in the Life Sciences?

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In In re: Xencor, Inc., the US Court of Appeals for the Federal Circuit confirmed that the limiting preamble of a Jepson claim must be supported by the specification with “sufficient written description.” In its decision, the...more

Lathrop GPM

Significant Federal Circuit Decision Redefines Prior Art Requirements

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Last week a remarkably interesting Federal Circuit case was decided concerning whether an asserted reference was properly shown to qualify as prior art in the rejection of a pending patent application. The pending application...more

A&O Shearman

Federal Circuit Clarifies Requirements For A Prior Art Reference’s Entitlement To The Filing Date Of A Provisional Application To...

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On March 24, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding a decision of the U.S. Patent Trial and Appeal Board (the “Board”) that a published patent application...more

McDermott Will & Emery

Even Jepson Preambles Require Written Description Support

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The US Court of Appeals for the Federal Circuit found a Jepson claim unpatentable where the specification did not provide adequate written description for the portion of the claim purporting to recite what was already well...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: In re: Xencor, Inc.

In re: Xencor, Inc., Appeal No. 2024-1870 (Fed. Cir. Mar. 13, 2025) Our case of the week is an appeal from a decision of the Appeals Review Panel of the Patent Trial and Appeal Board, concerning Xencor’s patent application...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Written Description and Enablement Depend on What a Patent 'Claims,' Not What the Claims Cover

The Federal Circuit recently reversed a district court decision that found a patent that did not describe after-arising technology failed to satisfy the written description requirement. In so doing, the Federal Circuit...more

McDermott Will & Emery

Eye-Catching: Biosimilars Injunction Prevails

Addressing a preliminary injunction in patent litigation related to the Biologics Price Competition and Innovation Act (BPCIA), the US Court of Appeals for the Federal Circuit upheld the district court’s grant of a...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Regeneron Pharmaceuticals, Inc. v. Mylan Pharmaceuticals Inc.

Regeneron Pharmaceuticals, Inc. v. Mylan Pharmaceuticals Inc., Appeal Nos. 2024-1965, -1966, -2082, -2083 (Fed. Cir. Jan. 29, 2025) Our Case of the Week is a 31-page decision that touches on a variety of issues, including...more

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

2024 Design Patents Year in Review: Analysis & Trends - Design Patents at the PTAB: 2024 in Review

Inter partes activity involving design patents at the Patent Trial and Appeal Board (PTAB) was relatively low in 2024. The PTAB rendered just two inter partes decisions involving design patents: Next Step Group, Inc. v....more

McDermott Will & Emery

Complex or Not Written Description Is Evaluated Against Claims

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The US Court of Appeals for the Federal Circuit reversed a district court’s ruling of invalidity for lack of written description, finding that the district court erred in its analysis of written description because patents...more

Knobbe Martens

A Patent Must Describe What Is Claimed, Not What Infringes

Knobbe Martens on

Before Lourie, Prost, and Reyna. Appeal from the U.S. District Court for the District of Delaware. Summary: A patent was not invalid for lack of written description for failing to describe the specific infringing embodiment...more

Alston & Bird

Patent Case Summaries | Week Ending January 10, 2025

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Novartis Pharmaceuticals Corp. v. Torrent Pharma Inc., et al., Nos. 2023-2218, -2220, -2221 (Fed. Cir. (D. Del.) Jan. 10, 2025). Opinion by Lourie, joined by Prost and Reyna. The FDA approved a New Drug Application from...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2025 #2

In re Entresto (Sacubitril/Valsartan), Appeal Nos. 2023-2218, -2220, -2221 (Fed. Cir. Jan. 10, 2025) In our Case of the Week, the Federal Circuit revived Novartis’s US Patent No. 8,101,659 by reversing the district...more

Baker Botts L.L.P.

Third Quarter 2024 Federal Circuit Law Update

Baker Botts L.L.P. on

Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant...more

McDermott Will & Emery

Later-Filed, Earlier-Expiring Patent Not an ODP Reference

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Addressing invalidity due to obvious-type double patenting (ODP) based on later-filed-related patents, the US Court of Appeals for the Federal Circuit reversed a district court’s application of In re Cellect (Fed. Cir. 2023)...more

Kilpatrick

5 Key Takeaways | Rolling with the Legal Punches: Resetting Patent Strategy to Address Changes in the Law

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Kilpatrick partners Tina McKeon, Michael Bertelson, and Michael Turton recently joined Laura Fritts (Vice President, Intellectual Property, Legal, Azurity Pharmaceuticals, Inc.) to present at the annual Kilpatrick...more

McDermott Will & Emery

For Statutory Equivalents, Even One Means May Be Enough

A US Patent & Trademark Office (PTO) appeals review panel decided that a means-plus-function (M+F) claim element supported by the disclosure of only a single species is not invalid for indefiniteness or lack of written...more

McDonnell Boehnen Hulbert & Berghoff LLP

PureCircle USA Inc. v. SweeGen, Inc. (Fed. Cir. 2024)

Not surprisingly, the Federal Circuit visited upon Plaintiff/Appellant PureCircle two of the Four Horsemen of the Biotech Patent Apocalypse* in a decision affirming the District Court's invalidation of the claims asserted...more

Jones Day

Institution Denied Based On Written Description in “Alternative Embodiments”

Jones Day on

On September 21, 2023, the PTAB denied United Services Automobile Association’s petition to institute inter partes review of Auto Telematics’s U.S. Patent No. 9,633,487.  IPR2023-00519, Paper 10....more

McDermott Will & Emery

Holy Pulmonary Hypertension, Batman: Method of Treatment Not Constrained by Safety and Efficacy

The US Court of Appeals for the Federal Circuit affirmed a district court’s holding that the asserted method of treatment patent was valid and infringed because safety and efficacy are not patent concerns. The Federal Circuit...more

Sheppard Mullin Richter & Hampton LLP

Parus Holdings, Inc. v. Google LLC, No. 2022-1269, 2022-1270 (Fed. Cir. Jun. 12, 2023)

This case concerns determining the prior art status of certain references in an inter partes review. The Federal Circuit considered whether the Patent Trial and Appeal Board (the “Board”) was correct in declining to consider...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2023 #4

United Therapeutics Corporation v. Liquidia Technologies, Inc., Appeal Nos. 2022-2217, 2023-1021 (Fed. Cir. July 24, 2023) In the Federal Circuit’s only precedential patent case this week, the Court considered questions...more

Akin Gump Strauss Hauer & Feld LLP

Courts Must Analyze Claims as a Whole to Determine Whether Independent Claims That Lack Written Description Preclude Assertion of...

The District Court for the District of New Jersey recently denied a defendant’s motion for summary judgment which sought to invalidate a dependent claim on preclusion grounds based on the PTAB’s invalidation of the related...more

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