Posts

“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”. […]

Federal Circuit reverses PTAB, citing “erroneous interpretation” of claim language and “misunderstanding” of precedent

Tech Con Prod v Light Science, Appeal No. 2019-1361, Fed. Cir. April 8, 2020. Lighting Science Group Corp. (“LSG”) owns US patent no. 8,201,968 (the “‘968 patent”) directed to retrofit LED light fixtures that accommodate a variety of housing shapes and sizes, while yet maintaining a low profile when installed.  To this end, the claim […]

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 […]

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 […]

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 […]

Examiner reversed, reminded that claims “must be read in accordance with the precepts of English grammar”

With a Federal Circuit citation, no less. In Ex parte Moffat, USSN 15/227,827, the claims on appeal were directed to toner compositions with white colorants.  Independent claim 1 recited, in pertinent part:  An emulsion aggregation toner having toner particles comprising … one single white colorant consisting of titanium dioxide… While claim 21, dependent from claim […]

Federal Circuit reverses PTAB’s holding that the preamble “travel trailer” was nothing more than an intended use, and not limiting

David Fought and Martin Clanton (“Appellants”, In re Fought and Clanton) are the named inventors on US Patent Application No. 13/507528 directed to a “travel trailer.”  The Examiner rejected the claim 1 under 35 USC 102(b) over a reference describing a conventional truck trailer and claim 2 under 35 USC 102(b) over a reference describing […]

UK Court Holds “Consisting Essentially of” Language does not give Rise to “Objectionable Uncertainty”

Anan Kasei v Neo Chemicals Though the claims at issue in this UK infringement action recited properties that could be deemed to be the claimed oxide’s “essential characteristics,” it is interesting to compare this case with HZNP v. Horizon Pharma (see my recent post for further details), recently decided by the Federal Circuit. The UK […]

Wherein clauses are limiting on their face, more so if the specification and prosecution history support that they are material to patentability

Multiple components from the prior art cannot be pieced together to provide the structure and function of one claim recitation

I see this a fair amount, and actually just prepared a response last week where the Examiner had so construed a reference, and so this decision caught my eye. In Ex parte de Ceuster, the Examiner had combined two components of the prior art, a masking layer 2 and insulating layer 20, in order to […]