Posts

“Half-liquid” held indefinite by the Federal Circuit – IBSA v Teva

IBSA v Teva Though IBSA provided direct and indirect evidence that one of ordinary skill in the art would understand the term to be a synonym of “semi-liquid,” the Federal Circuit discounted it.  The Court instead found support in a prosecution history where the term was not directly at issue. Background IBSA is the assignee […]

“Configured to” is not indefinite, even if subject to multiple interpretations

So held the Federal Circuit in Nevro Corp. v. Boston Scientific, Appeal Nos. 2018-2220, 2018-2349, Fed. Cir., April 9, 2020, while similarly throwing a lifeline to “parathesia-free” (rejecting BSC’s argument that the claims are indefinite because infringement can only be determined after using the device or performing the method), “means for generating” and “therapy signal”. […]

Prosecution history estoppel does not apply if arguments were “made in a different context”

In MTD Products, Inc. v. Andrei Iancu (MTD), MTD appealed to the Federal Circuit from an IPR decision holding all claims unpatentable of US 8,011,458.  The claims at issue concerned a zero-turn radius vehicle, typically a mower.  The claim term “mechanical control assembly” was at issue and in particular, whether or not the claim term […]

Federal Circuit vacates and remands to PTAB with instructions to “address the relevant factors…under the proper legal standard”

Or, “Things that should never have to be said” In In re Global IP Holdings, LLC, Fed. Cir., No. 2018-1426, July 5, 2019, the Federal Circuit so held/said, after the Examiner and PTAB maintained the position held to be without legal basis for over 4 years. See, USSN 14/632238, the reissue application of US Patent […]