Category Archives: Claim Construction

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CAFC Says Functional Claim Language Does Not Create Divided Infringement

In LifeNet Health v. LifeCell Corporation, one of the many issues the Federal Circuit decided was that functional claim language did not create a divided infringement situation, even though an independent actor could impact whether the functional limitation was met. Under the court’s decision, since the limitation was a negative one, an independent actor could negate infringement, but his … Continue reading this entry

Construing Markush Group Claims

In Multilayer Stretch Cling Film v. Berry Plastics, the Federal Circuit provided a detailed discussion of the construction of claims that use Markush group language. The decision emphasizes the closed nature of the “consisting of” terminology, and underscores the care that should be used with Markush group claim language.… Continue reading this entry

District Court Finds Enhanced Patent Indefiniteness

I don’t usually write about district court decisions, but the patent indefiniteness ruling in Andrulis Pharmaceuticals Corp. v. Celgene Corp. (D. Del., July 26, 2015), caught my attention. The court held the asserted claim indefinite based on the term “enhanced,” not because it was a qualitative term, but because “it could mean less than additive, additive, or … Continue reading this entry

Dependent Claims Give Rise To Improper Broadening Reissue

In ArcelorMittal France v. AK Steel Corp., the Federal Circuit found that the addition of a dependent claim to a reissue application improperly broadened the scope of the original independent claims beyond the two-year period for a broadening reissue. While the court invoked the law-of-the-case doctrine, the same result could occur with any patent where the claims … Continue reading this entry

Court Cites Objects Of Invention In Claim Construction

Pacing Technologies, LLC v. Garmin International, Inc. is one of those Federal Circuit decisions that may send patent practitioners running to their files to double-check the phrasing used in their patent applications. Not only did the court decide that the preamble of a claim was limiting, it held that a relatively common patent drafting technique … Continue reading this entry

Why Did The Supreme Court GVR The Shire Lialda Case?

On January 26, 2015, the Supreme Court granted certiorari, vacated, and remanded Shire Development LLC v. Watson Pharmaceuticals, Inc., to the Federal Circuit “for further consideration in light of Teva Pharmaceuticals USA, Inc., v. Sandoz, Inc.” But, if Teva v. Sandoz still calls for de novo review when the claim construction was based only on intrinsic evidence, … Continue reading this entry

Supreme Court Calls For Some Deference In Claim Construction Standard Of Review

On January 20, 2015, the Supreme Court issued its decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., finding that the Federal Rules of Civil Procedure call for some deference in the claim construction standard of review. In particular, the Court held that when claim construction is based on external evidence, a district court’s findings of … Continue reading this entry

Federal Circuit Vacates Infringement Of Braintree SUPREP Patent

In a divided opinion issued in Braintree Labs., Inc. v. Novel Labs., Inc., the Federal Circuit reversed the district court on one of two challenged claim construction issues and vacated the district court’s finding of infringement to remand for further factual findings. When no judge agrees with the basis of the decision and neither party is satisfied … Continue reading this entry

Split Federal Circuit Hews To De Novo Claim Construction Review

In a six-four en banc decision in Lighting Ballast Control LLC v. Philips Electronics North Am. Corp., a divided Federal Circuit confirmed its practice of de novo claim construction review. The main question arising from the decision is whether the Federal Circuit’s lack of consensus on this important legal issue will make it attractive for Supreme Court … Continue reading this entry

Takeda Prevacid SoluTab Patent Valid, But Not Infringed

In Takeda Pharmaceutical Company Ltd. v. Zydus Pharmaceuticals USA, Inc., the Federal Circuit reversed the district court’s finding that Zydus’s proposed generic product infringed Takeda’s Prevacid® SoluTab™ patent, but agreed with the district court that Zydus had failed to prove that the patent is invalid. However, the Federal Circuit also explained that it would have … Continue reading this entry

Federal Circuit Upholds Lyrica Patents

In a non-precedential decision issued February 6, 2014, the Federal Circuit affirmed a district court decision that upheld the four Orange Book listed patents for Pfizer’s Lyrica® product. According to the court’s rules, the non-precedential designation of Pfizer Inc. v. Teva Pharmaceuticals USA, Inc. means that the panel determined that it did not add significantly to … Continue reading this entry

Federal Circuit Reverses Board Rejections That Strayed From Claim Construction

In the non-precedential decision in In re Eaton, the Federal Circuit reversed the USPTO Board decision affirming rejections of anticipation and obviousness. The court found that the Board decision strayed from its own claim construction and was founded on plain factual errors. The Application At Issue The application at issue was Eaton’s U.S. 11/145,716, directed … Continue reading this entry

Federal Circuit Holds Patentee To Functional Claim Language

In Bayer Cropscience AG v. Dow AgroSciences LLC, the Federal Circuit upheld the district court’s claim construction that interpreted “2,4-D monooxygenase” in accordance with its  established scientific meaning, even though the exemplified embodiment was shown not to be a “monooxygenase.” This case illustrates the risks of functional claim language, particularly if the recited function is … Continue reading this entry

Federal Circuit Remands Sequenom Down Syndrome Test Platform Patent For Consideration Under Myriad

In Aria Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit vacated and remanded the district court’s decision denying Sequenom’s motion for a preliminary injunction relating to a patent covering the non-invasive Sequenom Down Syndrome test. The Federal Circuit found that the district court had “incorrectly interpreted the asserted claims and improperly balanced factors regarding issuance … Continue reading this entry

Federal Circuit Finds "Molecular Weight" To Be Insolubly Ambiguous

Please welcome Daniel Shelton, an associate in the Chemical, Biotechnology and Pharmaceutical Practice of Foley & Lardner LLP, as a new author for PharmaPatentsBlog. In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., the Federal Circuit invalidated a number of claims directed to a polymer defined by its “molecular weight” because the term was ambiguous, and … Continue reading this entry

Claim Construction Not Illuminated By Ambiguous Restriction Requirement

In Plantronics, Inc. v. Alph, Inc., the Federal Circuit rejected arguments that the election made in response to the Restriction Requirement limited the scope of the claims in a manner that was not reflected in the claim language, specification, or prosecution history. Although the patent holder prevailed on this issue, this case serves as a … Continue reading this entry

A Quick Look At The First Patent Trial And Appeal Board Decision In a Covered Business Method Patent Proceeding, SAP America, Inc. v. Versata Development Group, Inc.

On June 11, 2013, the USPTO Patent Trial and Appeal Board (PTAB) issued its first final decision in a covered business method patent (CBM) proceeding, in SAP America, Inc. v. Versata Development Group, Inc. (CBM2012-00001). Although this case is not in the field of pharmaceuticals or biotechnology, a few aspects of this decision will be … Continue reading this entry

In Uship Federal Circuit Finds Prosecution History Disclaimer In Arguments Against Restriction Requirement

In Uship Intellectual Properties, LLC v. United States, the Federal Circuit upheld the claim construction applied by the Court of Federal Claims when it held that the United States and IBM Corporation did not infringe the claims at issue. Coming on the heels of the Biogen case, this decision provides another warning that any statements … Continue reading this entry

Federal Circuit Finds Prosecution History Disclaimer In Enablement Arguments

In Biogen Idec, Inc. v. GlaxoSmithKline LLC, the Federal Circuit upheld a narrow claim interpretation based on prosecution history disclaimer. The court held that the applicants’ arguments against an enablement rejection served to disclaim the broader claim scope sought in the infringement action. This case highlights the risk that any statement made during prosecution can … Continue reading this entry

Federal Circuit To Reconsider De Novo Review Of Claim Construction

In a nonprecedential order issued March 15, 2013, the Federal Circuit granted rehearing en banc in Lighting Ballast Control, LLC v. Philips Electronics North America Corp., to consider the following questions: Should this court overrule Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998)? Should this court afford deference to any aspect of … Continue reading this entry

Federal Circuit Uses Dependent Claims To Construe "Therapeutically Effective Amount"

In Alcon Research, Ltd. v. Apotex Inc., the Federal Circuit held that most claims of Alcon’s patent were obvious in view of prior art that suggested the use of the recited active agent to treat the recited condition, but not by the recited mechanism of action, because the prior art used a concentration of active … Continue reading this entry

Federal Circuit Finds District Court Strayed Too Far When Construing Claims

In Advanced Fiber Technologies Trust v. J & L Fiber Services, Inc., the Federal Circuit reversed the district court’s claim construction that relied on extrinsic evidence and was inconsistent with the specification. Although the patent holder ultimately may prevail, a different claim strategy might have avoided the problematic claim construction.… Continue reading this entry

Federal Circuit Splits Over Claim Construction

In Retractable Technologies, Inc. v. Becton, Dickinson and Company, the Federal Circuit affirmed-in-part and reversed-in-part the district court’s finding that two of Becton, Dickinson’s retractable syringes infringed Retractable’s patents. The Federal Circuit found that one, but not both, of Becton, Dickinson’s syringes infringed the patents. For many, the conflicting approaches to claim construction espoused by Judge … Continue reading this entry

Claim Differentiation: The Weakest Link?

The recent Federal Circuit decision in ERBE Elektromedizin GMBH v. Canady Technology LLC serves as a reminder that the doctrine of claim differentiation generally will not be useful to support a claim interpretation that is contradicted by other claim construction tools. The Claims At Issue The technology at issue in ERBE relates to medical devices for argon gas-enhanced electrosurgery. … Continue reading this entry