Tag Archives: Infringement

Supreme Court Lays Burden Of Proof On Patentee, Even In Declaratory Judgment Action

In Medtronic, Inc. v. Mirowski Family Ventures, LLC, a unanimous Supreme Court held that the patent holder bears the burden of proving infringement, even in a declaratory judgment action brought by a licensee. In reaching its decision, the Court dismissed concerns that it would skew the balance of power between patent holder and licensee, noting … Continue reading this entry

Federal Circuit Finds Flexibility In Admissibility Of Expert Testimony On Infringement

In MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., the Federal Circuit upheld the admissibility of expert testimony that was not fully aligned with the district court’s claim construction. In so doing, the court explained that deviations from the claim construction might impact the infringement determination, but did not render the evidence irrelevant as a … Continue reading this entry

Federal Circuit Upholds Fentora Patents, But Affirms Non-Infringement

In Cephalon, Inc. v. Watson Pharmaceuticals, Inc., the Federal Circuit reversed the district court’s finding that two Orange Book-listed patents for Cephalon’s FENTORA® product were invalid, but affirmed the district court’s finding that Watson’s ANDA product would not infringe the patents. The Federal Circuit decision reviews the “undue experimentation” standard for lack of enablement, and … Continue reading this entry

Federal Circuit Draws Two Lines In Crestor ANDA Litigation

In AstraZeneca Pharmaceuticals LP v. Apotex Corp., the Federal Circuit held that the district court had jurisdiction over AstraZeneca’s ANDA complaint, but also held that the complaint should be dismissed for failing to state a viable claim for relief because the ANDAs included Section viii statements that carved out the methods claimed in the patents … Continue reading this entry

The New Prior Commercial Use Defense

While most provisions of the Leahy-Smith America Invents Act do not take effect until September 16, 2012 or March 16, 2013, several litigation-related provisions took effect immediately, on September 16, 2011. Among those is the newly expanded prior commercial use defense, which includes terms that are directly relevant to the pharmaceutical industry.… 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

Federal Circuit Explains Unforseeability Under Festo

In Duramed Pharmaceuticals, Inc. v. Paddock Laboratories, Inc., the Federal Circuit rejected Duramed’s arguments that prosecution history estoppel did not bar application of the doctrine of equivalents under Festo because the equivalent at issue was not foreseeable. In so doing, the Court illuminated the rather narrow applicability of the “unforeseeable” route to rebutting a presumption … Continue reading this entry

Patentability Versus Freedom To Operate

The difference between patentability and freedom to operate took the forefront in Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc.  The Federal Circuit upheld the district court’s denial of JMOL after a jury found that Saint-Gobain was liable for infringing Siemens’ patent under the doctrine of equivalents, even though Saint-Gobain’s product was … Continue reading this entry

Who Will Infringe That Method Claim?

In Akamai Technologies, Inc. v. Limelight Networks, Inc., the Federal Circuit clarified the requirements for establishing joint infringement--a theory of direct infringement that may be used when a single party does not perform all of the steps of a method claim. The decision provides a good reminder to consider "who" is likely to perform each step of a method claim. This analysis can be particularly important in the context of diagnostic and personalized medicine methods. … Continue reading this entry

Two for Tuesday: En Banc Hearings in Therasense, Tivo

This week brings two en banc hearings at the Federal Circuit. Inequitable conduct issues will be addressed in Therasense, Inc. v. Becton, Dickinson & Co., and contempt proceedings issues will be addressed in Tivo Inc. v. Echostar Corp. Both hearings are scheduled for Tuesday, November 9, at 10:00 am, in courtroom 201. Therasense, Inc. v. … Continue reading this entry

Prior Invention In The U.S. Requires A Prior U.S. Inventor

In Solvay S.A. v. Honeywell International, Inc., the Federal Circuit discussed the contours of 35 USC § 102(g)(2). The court found that Honeywell’s prior (secret) use of the process claimed in Solvay’s patent did not qualify as an invalidating prior invention because Honeywell was not an original inventor of the subject matter at issue. This case underscores … Continue reading this entry

The Significance of Numerical Claim Limitations

Can the doctrine of equivalents be invoked to establish infringement of a claim that recites a numerical value? Yes, according to the Federal Circuit’s decision in Adams Respiratory Therapeutics, Inc. v. Perrigo Co.  Can the concept of significant digits be used to establish infringement? Although the court does not say so directly, its opinion indicates … Continue reading this entry