The US Court of Appeals for the Federal Circuit found that a district court misconstrued claim terms based on a misapplication of the clear and unequivocal disavowal standard and vacated its noninfringement decision. Maquet...more
Case Name: Allergan USA, Inc. v. Sun Pharm. Indus. Ltd., No. CV 19-1727-RGA, 2022 WL 16921800 (D. Del. Nov. 14, 2022) (Andrews, J.) Drug Product and Patents-in-Suit: Viberzi® (eluxadoline); U.S. Patents Nos. 9,675,587 (“the...more
A judge in the Eastern District of Virginia recently held that cancellation of independent claims in an inter partes review (IPR) did not preclude the plaintiff from asserting infringement based on the doctrine of equivalents...more
Case Name: Almirall, LLC v. Torrent Pharms., Ltd., Civ. No. 20-1373-LPS (D. Del. July 13, 2021) (Stark, J.) - Drug Product and Patent(s)-in-Suit: Aczone® Gel, 7.5% (Dapsone); U.S. Patent No. 9,517,219 (“the ’219 patent”)...more
In Part I, we gave you a high-level overview of how New Markets Tax Credits (“NMTC”) and Historic Rehabilitation Tax Credits (“HTC”) can be combined to generate significant private capital for qualified historic projects...more
The act of combining (or “twinning”) tax credits, such as the New Markets Tax Credit (“NMTC”) and the Historic Rehabilitation Tax Credit (“HTC”), can offer developers an opportunity to bridge funding gaps and increase the...more
On July 15th, Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, "CVC") filed its opposition to Senior Party ToolGen's Substantive Motion No. 1 for benefit...more
After more than two decades of being the red-headed stepchild of patent infringement before the Federal Circuit, infringement under the doctrine of equivalents has made a dramatic comeback in the past few years, the Court...more
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
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 Federal Circuit during 2019 and 2020 has issued a spate of decisions on the proper application of the Doctrine of Equivalents (see, e.g., UCB, Inc. v. Watson Laboratories Inc. and Galderma Laboratories, L.P. v. Amneal...more
The Federal Circuit has affirmed infringement under the doctrine of equivalents in a number of cases over the last few years. Briefly, the judicially created doctrine of equivalents is intended to expose those who adopt the...more
Infringement under the doctrine of equivalents (as a basis of a successful cause of action having renewed vigor before the Federal Circuit recently (see, e.g., "Galderma Laboratories, L.P. v. Amneal Pharmaceuticals LLC") is...more
I. Introduction - The presumption of prosecution history estoppel is difficult to overcome. This presumption typically arises when a claim is rejected over the prior art and is then amended (limited) to overcome the...more
Recently, the Federal Circuit has taken up issues relating to infringement under the doctrine of equivalents (DOE) and a related doctrine, prosecution history estoppel (PHE), that limits the scope of equivalents that can be...more
In a non-precedential opinion issued this month, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board affirmed the refusal to register Jos. A. Magnus & Co., LLC’s mark MAGNUS for “whiskey, gin, and...more
Amgen, Inc. v. Amneal Pharmas. LLC et al - Before Newman, Lourie, and Taranto. Appeal from the U.S. District Court for the District of Delaware. Summary: An examiner amendment may give rise to prosecution history...more
PHARMA TECH SOLUTIONS, INC. v. LIFESCAN, INC. Before Moore, Reyna, and Stoll. Appeal from the United States District Court for the District of Nevada. Summary: Claims for infringement under the doctrine of equivalents...more
Claim construction for a design patent is mainly focused on the drawings, which show the ornamental design that is protected by the patent. But the Federal Circuit recently identified one situation where the drawings weren’t...more
Addressing an infringement determination under the doctrine of equivalents (DOE), the US Court of Appeals for the Federal Circuit found that the “tangential relation” exception to the doctrine of prosecution history estoppel...more
The Federal Circuit affirmed dismissal of design patent infringement claims under an estoppel theory triggered by amendments made to meet patentability requirements in Curver Luxembourg, SARL v. Home Expressions Inc., No....more
The US Court of Appeals for the Federal Circuit affirmed a dismissal based on the defendant’s failure to state a claim motion, concluding that under principles of prosecution history estoppel, the patent owner could not...more
The Federal Circuit has consistently described the “tangential” exception to the presumption of prosecution history estoppel as “very narrow.” Only a few Federal Circuit decisions have found proof of the tangential exception...more
ELI LILLY AND COMPANY v. HOSPIRA, INC. Before Lourie, Moore, and Taranto. Appeal from the District Court for the Southern District of Indiana. Summary: A narrowing claim amendment does not necessarily surrender all...more
On August 9, 2019, the United States Court of Appeals for the Federal Circuit, in Eli Lilly & Co. v. Hospira, Inc., Nos. 2018-2126, 2127, 2128, reversed in-part and affirmed in-part a district court’s determination of...more