Megestrol Nanoparticle Formulation Claims – Not Inherently Obvious (at least not yet)

12.19.14 Posted in Federal Circuit Opinions by

in an obviousness analysis, an inherency argument has a heightened standard that must be the natural result flowing from the operation as disclosed in prior art references.


Means-plus-function claims – indefinite because of insufficient structure in the specification

10.27.14 Posted in Federal Circuit Opinions by

Contact the author: Andrew Berks Robert Bosch, LLC v. Snap-On, Inc., No. 2014-1040 (Fed. Cir. 10/14/2014). The Federal Circuit panel, (Prost, Taranto, and Hughes) outlines a two-step framework for determining if a claim invokes 35 U.S.C. § 112(f) (formerly (formerly 112 ¶ 6). The panel concludes the challenged claim invoked 35 U.S.C. § 112(f), i.e., the claim is […]


Abbvie v. Janssen: Another nail in the coffin of functional claiming

08.03.14 Posted in Federal Circuit Opinions by

Contact the author: Andrew Berks AbbVie Deutschland GmbH v. Janssen Biotech, Inc., No. 2013-1338 (Fed. Cir. 7/1/2014) This is a significant decision that extends the Federal Circuit’s holdings on written description from Ariad Pharms., Inc. v. Eli Lilly Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc), and has important lessons for patent applicants seeking to […]


Nautilus v. Biosig – The Supreme Court Clarifies the Clarity Requirement

06.05.14 Posted in Supreme Court Opinions by

Contact the author: Andrew Berks Nautilus, Inc. v. Biosig Instr.. Inc., No. 13-369 (S. Ct. 6/2/2014) Opinion by Ginsburg. The definiteness requirement, 35 U.S.C. §112(b) (AIA, effective 9/12/2012; previously §112 second para.) requires that a patent  “specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or […]


Gilead v. Natco – Gilead’s patent invalid for obviousness-type double patenting

04.27.14 Posted in Federal Circuit Opinions by

The panel concludes that looking to the earliest patent expiration for patents that are obvious variants “best fits and serves the purpose of the doctrine of double patenting.”


Zydus Not Infringing Lansoprazole ODT Particle Size Claim

03.29.14 Posted in Federal Circuit Opinions by

Contact the author: Andrew Berks Takeda Pharm. Co. Ltd. v. Zydus Pharms. USA, Inc., No. 2013-1406 (Fed. Cir. 2/20/2014) This Hatch-Waxman case pertains to particle size claims for the brand name drug Prevacid® SoluTab™. The product is an orally dissolving tablet (ODT) containing lansoprzaole. Only claim 1 of US6328994 is in dispute, which reads, in relevant […]


PTAB Obviousness Finding Reversed in Institut Pasteur GIIE Endonuclease Patents

01.05.14 Posted in Federal Circuit Opinions by

Contact the author: Andrew Berks Inst. Pasteur v. Focarino, No. 2012-1485 (Fed. Cir. 12/30/2013) Three patents were at issue, US6610545, US6833252, and US7309605, all based on an application originally filed 5/6/1992 and expired on 5/6/2012. The patents disclose group I intron encoded (GIIE) endonucleases. GIIE endonucleases are valuable research tools that are highly specific in selecting […]


Wyeth’s expansive claim construction results in finding of non-enablement

01.04.14 Posted in Federal Circuit Opinions by

Contact the author: Andrew Berks Patents on rapamycin for restenosis held invalid for lack of enablement. Wyeth v. Abbott Laboratories, 720 F.3d 1380 (Fed. Cir. 2013). Wyeth sued defendants for patent infringement. Defendants counterclaimed that the patents were invalid as not enabled and for lack of written description.  The specification disclosed only one rapamycin species (sirolimus). The alleged […]


Sloppy Claim Drafting Invalidates Teva Copaxone Claims

08.27.13 Posted in Federal Circuit Opinions by

Teva Pharms. USA, Inc. v. Sandoz, Inc.,, No. 2012-1567 (Fed. Cir. 7/26/2013) (no reporter cite) (Rader, Moore, and Benson (sitting by designation from the District of Utah). Opinion by Moore. Teva sued Mylan and Sandoz for patent infringement of nine patents covering copolymer-1, marketed by Teva as “Copaxone®” for the treatment of multiple sclerosis. Copolymer-1 […]


Wellman, Inc. v. Eastman Chemical Co. – A Trade Secret Does Not Excuse Best Mode

06.13.11 Posted in Federal Circuit Opinions, News by

Wellman lost a patent infringement claim on the grounds that it failed to disclose a specific preferred formulation known at the time the patent was filed, and also because it attempted to hold back part of the invention as a trade secret.   Wellman, Inc. v. Eastman Chemical Co., No. 2010-1249 (Fed. Cir. 4/29/2011). Wellman had […]