Attorney:
David Inglefield
July 23, 2025
On June 30, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision regarding transitional phrase claim construction, reversing the decision of the Patent Trial and Appeal Board (PTAB) in Eye Therapies, LLC. v. Slayback Pharma, LLC. The PTAB had previously ruled the claims of U.S. Patent No. 8,293,742 (the ‘742 patent) unpatentable as obvious in a inter partes review brought by Slayback. During the inter partes review, the parties had disagreed on the construction of the transitional phrase “consisting essentially of” in the ‘742 patent. The Court found that the Board had incorrectly applied the conventional open construction of the transitional phrase, which was at odds with the prosecution record. This demonstrates how prosecution history can alter a phrase’s typical meaning.<... Read more
Attorney:
David Inglefield
March 10, 2025
On February 13, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed the decision of the International Trade Commission (ITC) in US Synthetic Corp. v. International Trade Commission, issuing a precedential decision regarding subject matter eligibility important to the pharmaceutical and other life science industries. The ITC had previously ruled that US Synthetic’s composition of matter claims reciting measured properties of a composition were directed to a patent-ineligible abstract idea under 35 U.S.C. § 101. The CAFC found that the claims were indeed related to concrete structures, not patent-ineligible abstract ideas, and affirmed the lower court’s finding regarding enablement.<... Read more