News & Analysis as of

Written Descriptions

Jones Day

UK Court of Appeal Upholds Invalidation of Adidas' "Three Stripe" Position Marks

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The court has reminded brand owners that position trade marks must comprise a single identifiable sign, and cannot be left open-ended by broad written descriptions. Fashion brand Thom Browne applied for declarations of...more

A&O Shearman

Federal Circuit Affirms the ITC’s Finding of Invalidity of Water-Filter Patent

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In Brita LP v. Int’l Trade Comm’n, No. 24-1098 (Fed. Cir. Oct. 15, 2025), the Federal Circuit, in a precedential opinion, affirmed the International Trade Commission’s (“ITC” or “Commission”) decision that certain claims of...more

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

Taking a Cue from the “Unpredictable Arts” – New Thinking for Preparing AI Applications

As artificial intelligence (AI) becomes a fixture across a broad range of technological fields, AI technology continues to evolve at rapid rates. This highly compressed development lifecycle for AI products presents novel...more

McDermott Will & Schulte

Enablement: Skilled artisan’s knowledge no substitute for adequate written description

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The US Court of Appeals for the Federal Circuit affirmed the US International Trade Commission’s (Commission) decision that a water filtration patent was invalid for lack of written description and enablement because the...more

American Conference Institute (ACI)

[Event] 8th Annual Summit on Life Sciences IP Due Diligence - December 3rd - 4th, Boston, MA

Attend ACI's 8th Annual Summit on Life Sciences IP Due Diligence, and join IP counsel from across the life sciences industry to benchmark your diligence strategies, strengthen portfolio valuation approaches, and stay ahead of...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Clarifies that Issuance of an Amended Claim Does Not Provide Substantial Evidence of Compliance...

In this edition of The Precedent, we outline the decision in Mondis Technology Ltd. v. LG Electronics Inc. In Mondis Technology Ltd. v. LG Electronics Inc., the Federal Circuit addressed the scope of the presumption of...more

Robins Kaplan LLP

In re Selenious Acid Litigation

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Nature of the Case and Issue(s) Presented: Plaintiff American Regent, Inc. (“ARI”) sued multiple ANDA filers (including Sun, Cipla, RK Pharma, and Aspiro) under § 271(e)(2) of the Hatch Waxman Act, and moved for a preliminary...more

Fish & Richardson

Lessons for Biopharma From the Battle of Entresto®

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After more than six years of high-stakes litigation in multiple courts and regulatory fights at the Food and Drug Administration (FDA), generic versions of Novartis Pharmaceuticals Corp. (“Novartis”)’s Entresto® have entered...more

Venable LLP

PTAB Grants Institution of Four PGRs related to Merck’s Keytruda Qlex™

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Beginning in November 2024, Merck Sharp & Dohme, LLC (“Merck”) requested post-grant review (“PGR”) of 14 patents owned by Halozyme, Inc. (“Halozyme”), with claims directed to modified PH20 hyaluronidase polypeptides,...more

Alston & Bird

Patent Case Summaries | Week Ending October 17, 2025

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Causam Enterprises, Inc. v. ecobee Technologies ULC, No. 2024-1958 (Fed. Cir. (PTAB) Oct. 15, 2025). Opinion by Taranto, joined by Chen and Stoll. Causam asserted a patent that addresses techniques for actively controlling...more

Robins Kaplan LLP

Radius Health, Inc. v. Orbicular Pharm. Techs. Private Ltd.

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Nature of the Case and Issue(s) Presented: Tymlos is used to treat osteoporosis. The API in Tymlos, abaloparatide, is a synthetic analog of the first 34 amino acids of parathyroid hormone related protein (“PTHrP”). Early...more

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

Polymorph Patents

Companies interested in researching, developing, and commercializing pharmaceutical compounds should be aware of not only strategies for patenting the compound itself, but strategies for patenting polymorphs of the compound....more

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

Life Sciences IP Tool Kit 2025

Intellectual property (IP) strategy in the life sciences evolves as rapidly as the scientific breakthroughs driving the industry. Since the America Invents Act reshaped the U.S. patent system more than a decade ago, courts...more

Vedder Price

Federal Circuit Draws Tight Boundaries Around Functional Claiming

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For many technologies, what the innovation “does” is more important, and easier to describe, than what it “is.” When an innovation can be embodied in something tangible with measurable properties, it’s usually easier to...more

A&O Shearman

Federal Circuit Affirms JMOL Of No Damages in Surgical Stapler Patent Dispute

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On October 2, 2025, the United States Court of Appeals for the Federal Circuit (Judges Dyk, Prost, and Stoll) (“Federal Circuit”) affirmed the District of Delaware’s judgment in a patent infringement action holding that Rex...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Requires Jepson Claim Preambles Satisfy § 112’s Written Description Requirement in In re: Xencor,...

In this edition of The Precedent, we outline the decision in In re: Xencor, Inc. Xencor, Inc. (“Xencor”) filed U.S. Patent Application No. 16/803,690 (the “’690 Application”), which was directed to a method for treating...more

Knobbe Martens

Federal Circuit Review | August 2025

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In FMC Corp. v. Sharda USA, LLC, Appeal No. 24-2335, the Federal Circuit held that the district court erred by construing a claim term based on disclosures made in a provisional application and an unasserted patent in the...more

Bradley Arant Boult Cummings LLP

The Federal Circuit Calls for a Replay Allowing Sonos Another Opportunity at Google

The Federal Circuit’s recent decision in Google LLC v. Sonos, Inc. (24-1097) offers a compelling look at the evolving doctrine of prosecution laches, the written description requirement, and the practical realities of patent...more

Wilson Sonsini Goodrich & Rosati

Inventor’s Failure to Provide Material Information to the USPTO Results in an Unenforceable Patent

On August 20, 2025, the U.S. District Court for the District of Delaware (court) found inequitable conduct when Applicant, Lindis Biotech, GMBH (Lindis), relied on data from hastily performed experiments to obtain a patent...more

McDermott Will & Schulte

Specification controls: Written description must be clear

The US Court of Appeals for the Federal Circuit reversed a district court’s decision upholding patent validity, finding that the subject patent’s specification clearly established that the written description failed to...more

Alston & Bird

Patent Case Summaries | Week Ending August 8, 2025

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Mondis Technology Ltd., et al. v. LG Electronics Inc., et al., Nos. 2023-2117, -2116 (Fed. Cir. (D.N.J.) Aug. 8, 2025). Opinion by Hughes, joined by Taranto and Clevenger....more

Knobbe Martens

An Examiner’s Allowance Does Not Create an “Especially Weighty” Presumption of Written-Description Support

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MONDIS TECHNOLOGY LTD., HITACHI MAXELL, LTD., NKA MAXELL HOLDINGS, LTD., MAXELL, LTD.  v.  LG ELECTRONICS INC., LG ELECTRONICS USA, INC. - Before Taranto, Clevenger, and Hughes.  Appeal from the United States District Court...more

Baker Botts L.L.P.

The Provisional Patent Trap—Why Cutting Corners Can Place Startup IP Rights at Risk

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For startups sensitive to cash burn rate, provisional patent applications often seem like the perfect solution—lower filing fees, simplified requirements, and a full year to file the "real" application. However, this...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re BAC IP B.V. (Fed. Cir. 2025)

A patent applicant dissatisfied by an patent examiner's rejection of that applicant's claims in ex parte prosecution has recourse by appeal to the Patent Trial and Appeal Board (PTAB) under 35 U.S.C. § 134, and to the Federal...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Mondis Tech. Ltd. v. LG Electronics Inc.

Mondis Tech. Ltd. v. LG Electronics Inc., Appeal Nos. 2023-2117, -2116 (Fed. Cir. Aug. 8, 2025) Our Case of the Week focuses on the written description requirement, and, in particular, how that requirement is considered...more

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