New Dependent Claim is Proper Basis for Reissue Patent

04.20.11 Posted in Federal Circuit Opinions by

The reissue procedure is prescribed by 35 U.S.C. § 251, which permits a patentee to seek a review of a granted patent on the grounds that the patent is inadvertently defective due to an error in conduct which was made in the preparation and/or prosecution. The patent must be “wholly or partly inoperative or invalid by […]


Ariad v. Lilly: Federal Circuit Upholds Separate Written Description and Enablement

03.20.11 Posted in Federal Circuit Opinions by

In an en banc decision, the majority opinion of the Federal Circuit affirmed, in Ariad Pharms., Inc. v. Eli Lilly Co., that there are separate written description and enablement requirements in 35 U.S.C. § 112 first paragraph, and that the requirement applies to original claims as well as amended claims. (598 F.3d 1336 (No. 2008-1248) […]


Claim to breach of “have made” rights a federal question if enforcement is a question of patent infringement

03.06.11 Posted in Federal Circuit Opinions by

In ABB Inc. v. Cooper Indus. LLC, No. 2010-1227 (Fed. Cir. 2/17/2010), ABB took a license to a group of Cooper patents pertaining to a vegetable oil-based dialectric fluid called “Biotemp.”  The license purported to contain a “have made” provision prohibiting 3rd parties from manufacturing the claimed material.  ABB then outsourced manufacturing to Dow Chemical. Cooper […]


Centocor human antibody claims invalidated for lack of written description

03.06.11 Posted in Federal Circuit Opinions by

Centocor Ortho Biotech Inc. v. Abbott Labs., No. 2010-1144 (Fed. Cir. 2/23/2011) (opinion by Prost). Centocor sued Abbott for patent infringement alleging that Abbott’s Humira® antibody infringes US Patent No. 7,070,775. The jury rejected Abbott’s  defense that the asserted claims were invalid, and found Abbott liable for willful infringement and awarded Centocor $1.67 B. Abbott moved for […]


Obviousness in view of references considered in examination – Tokai Corp. v. Easton Enterprises, Inc.

02.23.11 Posted in Federal Circuit Opinions by

Tokai owned three patents at issue, pertaining to lighters with an elongated rod, useful for lighting barbecue grills.  Easton makes competitive products. Tokai sued Easton for patent infringement. The diputed feature was a safety device requiring the user to depress a button while pulling the trigger.  Tokai Corp. v. Easton Enterprises, Inc., No. 2010-1057 (Fed. […]


Defective Chain of Priority Results in Holding of Anticipation

01.12.11 Posted in Federal Circuit Opinions by

Encyclopaedia Britannica v. Alpine Electronics of America, No. 2009-1544 (Fed. Cir. 6/18/2010).  Encylopedia Britannica (EB) owns the ‘018 and ‘437 patents, pertaining to multimedia database search system for retrieving textual and graphical information.  EB sued defendants Alpine Electronics and several others alleging infringement of these two patents. The defendants argued that the patents were invalid […]


Prosecution Laches as Defense to Infringement — Cancer Res. Tech. Ltd. v. Barr Labs., Inc.

12.06.10 Posted in Federal Circuit Opinions by

Prosecution laches is an equitable defense to a charge of patent infringement, that “may render a patent unenforceable when it has issued only after an unreasonable and unexplained delay in prosecution” that constitutes an egregious misuse of the statutory patent system.


Obviousness in prodrugs — Daiichi Sankyo Co. v. Mylan

12.06.10 Posted in Federal Circuit Opinions by

Proof of obviousness based on structural similarity requires clear and convincing evidence that a medicinal chemist of ordinary skill would have been motivated to select and then to modify a prior art compound (e.g., a lead compound) to arrive at a claimed compound with a reasonable expectation that the new compound would have similar or improved properties compared with the old.


Donepezil: Teva has standing in declaratory judgement action that it doesn’t infringe listed patents

10.18.10 Posted in Federal Circuit Opinions by

Teva Pharms. USA Inc. v. Eisai Co., Ltd., No. 2009-1593 (Fed. Cir. 10/6/2010). Ranbaxy was first-filer (pre-MMA) for donepezil of an ANDA with a “paragraph IV” certification, and Teva was a subsequent filer with a paragraph IV certification. Teva obtained tentative approval for its ANDA, but was prevented from marketing by Ranbaxy’s first-filing. Teva sued […]


Adams Respiratory Therapeutics, Inc. v. Perrigo Co.

08.26.10 Posted in Federal Circuit Opinions by

No. 2010-1246 (Fed. Cir. 8/5/2010) (Linn, Moore, Friedman, opinion by Moore).This case highlights several important issues in an ANDA litigation. Background Adams owns the ‘252 patent for controlled release guaifenesin. Adams markets Mucinex® which is the preferred embodiment of the ‘252 patent. Slip op. at 3. Perrigo filed an ANDA seeking to market 600 mg […]


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