Sure, A Court Can Rewrite Patent Claims. But Can It Change A Disclosure? (Pavo Solutions, Part II)

Attorney: Jeffrey B. McIntyre
August 8, 2022

After discussing a court’s ability to rewrite patent claim language in view of the Federal Circuit’s decision in Pavo Solutions v. Kingston Technology (Pavo Solutions, Part I), my post last week noted that there was more to the story, including the issue of whether a court could rewrite a patent’s disclosure. Here are a few thoughts on that issue.<... Read more

Can A Court Rewrite Claim Language During Claim Construction? If You Don't Ask For It, You'll Never Know (Pavo Solutions, Part I)

Attorney: Jeffrey B. McIntyre
August 3, 2022

In Pavo Solutions v. Kingston Technology (June 2022), the Federal Circuit rewrote claim language in the asserted patent by changing the claim element "for pivoting" from case to cover. The claim element in question read as follows:<... Read more

Biogen v. Mylan Written Description - What Does The Federal Circuit's Decision Really Mean?

Attorney: Jeffrey B. McIntyre
December 8, 2021

Following up on my post last week (Dec 1.), I have read commentary about how the Federal Circuit’s decision in Biogen v. Mylan was incorrect. Is it really the case that the decision was wrong and that the Federal Circuit needs to address it en banc (or that the Supreme Court needs to address it)? <... Read more

Biogen v. Mylan: Make Sure Your Patent Applications Cover Your Current R&D

Attorney: Jeffrey B. McIntyre
December 1, 2021

Yesterday, in Biogen v. Mylan, the Federal Circuit ruled that claims in Biogen’s U.S. patent 8,399,514 (the ’514 patent) were invalid under 35 U.S.C. §112 for failing to satisfy the written description requirement. The Federal Circuit upheld the district court’s previous invalidity determination.<... Read more

GSK vs. Teva: Induced Infringement, Skinny Labels and Fat Damages

Attorney: Jeffrey B. McIntyre
October 6, 2020

Last week, in GlaxoSmithKline (GSK) v. Teva, the Federal Circuit reversed the district court's granting of judgment as a matter of law (JMOL) of no induced infringement by Teva. The JMOL had reversed a jury verdict finding of induced infringement by Teva. The Federal Circuit also sustained the jury's award of $234 million to GSK.... Read more

Biogen v. Banner Life Sciences -- The Limited Scope Of U.S. Patent Term Extensions (Hint: Metabolites Not Included)

Attorney: Jeffrey B. McIntyre
May 12, 2020

Under 35 U.S.C. §156, a patentee can extend a patent’s term to restore part of the term consumed during the Food and Drug Administration’s (FDA) New Drug Application (NDA) approval process for a compound covered by the patent.<... Read more

Persion v. Alvogen: Inherency in Obviousness Attacks

Attorney: Jeffrey B. McIntyre
January 13, 2020

Last month, the Federal Circuit affirmed the District Court of Delaware's decision in Persion Pharmaceuticals v. Alvogen invalidating as obvious two Persion patents claiming methods of treating pain in patients with hepatic impairment (compromised liver functionality) using hydrocodone. Important to the Federal Circuit's decision was the concept of "inherency."... Read more

Onyx v. Cipla: Companies Beware - What Your Patent Agent Tells You May Not Be Privileged

Attorney: Jeffrey B. McIntyre
March 4, 2019

In an order last month, the Delaware district court ruled that some communications involving Onyx's patent agent were not privileged and must be produced to Cipla. The court's order highlights potential pitfalls when relying upon advice solely from patent agents.... Read more

Boston University v. Everlight: Claim Invalid For Lack Of Enablement Because 17% Was "Physically Impossible"

Attorney: Jeffrey B. McIntyre
August 10, 2018

Last week, the Federal Circuit issued its opinion in Boston University (BU) v. Everlight, in which the court found that the only asserted claim (claim 19) was invalid for lack of enablement because 1/6 (17%) of the claimed subject matter was "physically impossible." Claim 19 was the only claim asserted at trial. The claim was directed to a semiconductor device comprising a substrate, a non-single crystalline buffer layer, and a growth layer grown on the buffer layer.... Read more

Jazz v. Amneal: Public Accessibility of Prior Art v. Reasonable Pertinence of Analogous Art

Attorney: Jeffrey B. McIntyre
July 26, 2018

Earlier this month, the Federal Circuit issued an opinion in Jazz Pharmaceuticals v. Amneal Pharmaceuticals, upholding the PTAB's finding that certain materials related to the FDA regulatory review process for Xyrem® were sufficiently accessible to the public to constitute prior art to seven Jazz patents. These materials (the "ACA materials") were accessible via a link on the FDA website "where background material would be posted before the meeting, and the meeting minutes, transcript, and slides would be posted after the meeting."... Read more