Ways to Amend the Claims in the Patent Invalidation Proceedings
As a firm responsible for managing global portfolios for pharmaceutical companies, we closely follow and seek to stay abreast of developments regarding patentability in various jurisdictions. We recently reviewed the Unified...more
The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board (PTAB or Board) concerning the application of 37 CFR § 42.73(d)(3)(i)’s estoppel provisions in invalidating amended patent claims....more
A district court recently granted a Rule 12(b)(6) dismissal of patent claims directed to intermittent fault detection (IFD) technology for electrical systems in aircrafts, deciding that the asserted claims are patent...more
The Federal Circuit recently affirmed summary judgment that patent claims directed to identifying advertisements based on search results are patent ineligible subject matter under 35 U.S.C. § 101. The court found that...more
September 21, 2023, marked the sixth anniversary of the significant amendments to the Patented Medicines (Notice of Compliance) Regulations (Regulations). This article provides an update on activities in the sixth year...more
While direct patent infringement is a strict liability offense, liability for inducing another’s infringement requires an element of intent. Specifically, the party accused of inducement must have known of the patent and...more
When a patentee responds to the challenge in the patent invalidation proceedings in China, sometimes it is necessary to amend the claims in order to obtain a decision from the CNIPA to maintain the validity of the patent...more
The Federal Circuit has ruled that the definition of a claim term in a patent incorporated by reference into the patent at issue doesn’t limit the claims in the patent at issue. In Finjan LLC v. ESET, LLC, Finjan sued...more
An ITC Administrative Law Judge (ALJ) recently issued an initial determination holding that PGR estoppel prevented GMG Products LLC (Respondent) from raising two prior-art products in the ITC....more
Goodwin’s 337 Quarterly Insider remains the premiere publicly available source for keeping up to date on all meaningful decisions coming out of the Commission. Please find below Goodwin’s insights on the months of April, May,...more
The PTAB Cannot Approve or Deny Certificates of Correction - In Honeywell International, Inc. v. Arkema Inc., Arkema France, Appeal Nos. 2018-1151, -1153, the Patent Trial and Appeal Board (“Board”) does not have the...more
Priority Claims Cannot Be Incorporated by Reference - In Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Limited, Appeal Nos. 2016-2707 and 2016-2708, the Federal Circuit held that when a patent for a...more
Federal Circuit Summaries - Before Reyna, Clevenger, and Wallach. Appeal from the United States District Court for the District of Colorado - Summary: Even in a simple mechanical case, a narrow disclosure in the...more