Genentech v. Iancu – another reminder that narrower, but valid, claims are preferable to broader, but invalid ones

Genentech v. Iancu, Appeal Nos. 2019-1263, 2019-1267, Fed. Cir., March 26, 2020. Genentech owns US Patent Nos 7,846,441 and 7,892,549, directed to the treatment of cancer with a combination of an antibody and a taxoid, without anthracycline.  The patents share a specification, and the claims of each require that the combination be administered in an amount […]

BASF patent gets a second chance at the Federal Circuit

basf-corp-v-snf-holding-company, Appeal No. 2019-1243, Fed. Cir. April 8, 2020. BASF owns US patent 5,633,329 (the “‘329 patent”), directed to an process of preparing super absorbing polymers, which have a tendancy to stick to the walls of the reactor in which they are manufactured.  The ‘329 patent claims a method of making the polymers, using a […]

Chalk holder that looks like a pencil a four time loser at the Federal Circuit

Lanard Toys v Dolgencorp, Appeal No. 2019-1781, Fed. Cir. May 14, 2020 Lanard Toys makes and sells the “Lanard Chalk Pencil”, a chalk holder that looks like a pencil.  Lanard obtained Design patent D671,167 directed to the ornamental features of the chalk holder, and also owns copyright Reg. Va 1-794-458.  Lanard began selling their Chalk […]

UPDATE – Federal Circuit denies HZNP’s request for en banc review

In HZNP Medicines LLC et al. v Actavis Laboratories UT, Inc., 940 F.3d 680 (Fed. Cir. 2019), a Federal Circuit panel affirmed the district court’s holding that the transitional phrase “consisting essentially of” rendered the claims at issue indefinite.  See, my previous post here – https://www.ksjlaw.net/federal-circuit-holds-that-transitional-phrase-consisting-essentially-of-renders-claim-indefinite-unless-the-basic-and-novel-properties-of-the-invention-are-definite/  On February 25, 2020, the Federal Circuit denied HZNP’s […]

“Method of preparation” claims survive §101 challenge at the Federal Circuit

Illumina v Ariosa Diagnostics C.A. No. 2019-1419 (Fed. Cir. 2020) In Illumina, the Federal Circuit reversed the District Court of Northern District of California, and held two patents directed to methods of preparing samples for use in diagnostic methods are patent eligible under 35 USC §101.  In doing so, the Court differentiated its decision in […]

“No risk trial” is an offer for sale, and triggers the on-sale bar

And relying on the exemplary data provided with the offer as proof of reduction to practice, without disclosing the offer, is not a good idea.  GS Cleantech v Adkins Energy, No. 2016-2231 (Fed. Cir. March 2, 2020). The US District Court for the Southern District of Indiana (“District Court”) found four of Appellants patents (US […]

Federal Circuit issues two decisions providing claim construction guidance

See, Kaken Pharma v Iancu, __ F.3d __, (Fed. Cir. Mar. 13, 2020) (Newman, O’Malley, TARANTO) and Personalized Media v Apple, [2018-1936] (Fed. Cir. March 13, 2020) (Reyna, Taranto, STOLL). In Kaken, the Federal Circuit used unequivocal statements in the specification and prosecution history, upon which the Examiner relied in allowing the claims, to reverse […]

A cautionary tale for use of “the present invention” – Techtronic Industries, LTD v. ITC

My first thought when reading this case was doesn’t anyone else have a garage door that will not close even when there is nothing in the way?  Or that goes on psychotic ‘opening and closing’ benders for no apparent reason?  I can’t be the only one – clearly improved garage door openers are needed in […]

Parties seek redress under Arthrex, despite “waiver”

In Sanofi-Aventis Deutschland GMBH, V. Mylan Pharmaceuticals Inc. Appeal Nos 2019-1368 and 2019-1369, decided November 19, 2019 Sanofi-Aventis v Mylan, a majority of the Federal Circuit rejected Sanofi’s request to vacate the Board’s decision and remand to a different Board panel under Arthrex, in a footnote.  Slip opinion, footnote 4.   Arthrex, Inc. v. Smith […]

Federal Circuit holds claims for infringement under the doctrine of equivalents barred by prosecution history estoppel

Pharma Tech Solutions, Inc., Decision IT Corp., v. LifeScan, Inc., LifeScan Scotland, LTD., Johnson and Johnson, Appeal 2019-1163, decided November 22, 2019. pharma-tech-solutions-v-lifescan Procedural Background Pharma Tech Solutions, Inc. sued LifeScan, Inc. for infringement of US Patent Nos. 6,153,069 and 6,413,411, both directed to blood glucose monitoring systems. As originally presented, the claims of the […]