Author:
Richard D. Kelly
October 1, 2026
The recent ARP (Appeal Review Panel) decision in ex Parte Baurin reversed a PTAB decision reversing the examiner’s final rejection of application 17/135,529 (‘529) on the grounds of obvious type double patenting (OTDP). The examiner’s OTDP rejection relied solely on the concept of harassment if the ownership of a patent issuing on ‘529 was different from for the reference patents. The examiner rejected the ‘529 application over five patents and one pending application (a patent thicket) on OTDP even though there was no extension of the monopoly period of the references relying on the M.P.E.P. and PTO guidance documents for the concept of harassment as the sole basis for the rejection. The PTAB rebutted these arguments in its decision denying the examiner’s request for reconsideration. The PTAB did not find any case law supporting the concept that the possibility of dual ownership alone was sufficient to support a double patent infringement rejection but did cite Gilead Sciences, Inc. v. Natco Pharma Ltd, 753 F.3d 1208 at 214 (Fed. Cir. 2014) where the Court found that a later filed and earlier expiring patent made the earlier filed and later expiring patent invalid for double patenting:<... Read more
Author:
Nathan Zwartz
September 28, 2026
On April 2, 2026, the U.S. Court of Appeals for the Federal Circuit affirmed summary judgment invalidating two patents based on improper inventorship. The decision arose from Fortress Iron, LP v. Digger Specialties, Inc., No. 2024-2313 (Fed. Cir. Apr. 2, 2026). In a case of first impression, the Court addressed whether an omitted coinventor is a “party concerned” under §?256(b). The Court held that omission of an undisputed joint inventor rendered the patents invalid where correction under the statute was not possible.<... Read more
Author:
Dorothy Jones, Ph.D.
August 21, 2026
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Author:
David Inglefield
August 12, 2026
On July 27, 2026, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Board of Regents of the University of Texas System v. Boston Scientific Corp., reversing a jury trial verdict that found Boston Scientific Corporation (BSC) liable for infringing a Board of Regents of the University of Texas System (UT) owned patent for drug-releasing biodegradable fiber implants. In the reversal, the CAFC found that the '296 patent was anticipated by U.S. Patent No. 5,364,627 (the '627 patent, “Song”) and that BSC was entitled to judgment as a matter of law (JMOL) on both anticipation and non-infringement, returning the $49.4 million jury awarded damages to BSC.<... Read more
Author:
Xiaohua (Joyce) Guo, Ph.D.
July 20, 2026
In Intellectual Pixels Limited v. Sony Interactive Entertainment LLC, the Federal Circuit affirmed a Patent Trial and Appeal Board decision holding claims 1-12 of U.S. Patent No. 10,681,109 unpatentable as obvious.<... Read more
Author:
Richard D. Kelly
June 9, 2026
The U.S. Supreme Court issued a unanimous decision on June 4, 2026, in Hikma Pharmaceuticals USA Inc. v. Amarin Pharma, Inc., tightening the standard for alleging induced patent infringement in the context of generic drug “skinny labels.”<... Read more
Author:
Richard D. Kelly
March 19, 2026
In our January Newsletter (here) we reported on the non-precedential Federal Circuit decision in Daiichi Sankyo Co. v. Seagen Inc., Fed. Cir. Dec 02, 2025, appeal 2023-2424, holding that Seagen’s U.S. Patent 10,808,039 (‘039) was invalid for lack of written description and enablement, over turning a jury verdict and JMOL to the contrary. This was the second time in a two-week period that the Court had overturned jury verdicts in favor of the patentee on written description. As the Court recognized in the earlier decision Duke Univ. et al. v Sandoz, Inc., 160 F.4th 1305 (2025) “a district court’s refusal to grant judgment as a matter of law may be reversed only if the evidence is such that without weighing the credibility of the witnesses the only reasonable conclusion is in the moving party’s favor.” This is a high burden to meet.<... Read more
Author:
Yan Cong, Ph.D.
March 12, 2026
In In re Blue Buffalo Enterprises, Inc., No. 2024-1611 (Fed. Cir. Jan. 14, 2026), the Federal Circuit affirmed the PTAB’s decision affirming the Examiner’s obviousness rejection after rejecting Blue Buffalo’s narrow construction of the claim term “configured for”.<... Read more
Author:
David Inglefield
March 11, 2026
On February 20, 2026, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision regarding recombinant DNA subject-matter eligibility, reversing a decision by the United States District Court for the District of Delaware in REGENXBIO, Inc. v. Sarepta Therapeutics. The district court had previously ruled claims of U.S. Patent No. 10,526,617 (the ‘617 patent) covering a cultured host cell containing a recombinant nucleic acid molecule patent ineligible under 35 U.S.C. § 101 during a patent infringement suit in which both parties moved for summary judgment of patent eligibility under 35 U.S.C. § 101. The district court agreed with Sarepta and held the claims ineligible under § 101 as directed to a natural phenomenon. The CAFC held the claims as not being directed to a natural phenomenon and reversed the district court’s decision, remanding the case for further proceedings.<... Read more
Author:
Derek Lightner, Ph.D.
December 19, 2025
An obviousness rejection was recently reversed by the Patent Trial and Appeal Board (PTAB) by the panel of Administrative Patent Judges (APJs) authored by Debra L. Dennett, and further including Jeffrey W. Abraham and Avelyn M. Ross in U.S. Appl. No. 17/395,422 (the 422 Application). The PTAB reversed the obviousness finding of examiner Justin Fischer, supported by Supervisory Patent Examiner (SPE) Katelyn W. Smith, and Quality Assurance Specialist (TQAS) Colleen P. Dunn, on the alleged obviousness of the claims over a combination of three to five references, three of which were the applicant-appellant’s own prior art. The main claim on appeal recited<... Read more