The Federal Circuit recently held that the written description requirement extends to the limiting preamble of a Jepson claim. In In re Xencor, Inc., Appel No. 2024-1870 (Fed. Cir. Mar. 13, 2025), the court affirmed the PTO’s written description rejections of a claim...
Question: Whether a prior final written decision of a Patent Trial and Appeal Board on the unpatentability of certain claims provides collateral estoppel to a district court in deciding the patentability of different but similar claims if the differences between the...
In DDR Holdings, LLC v. Priceline.com LLC and Booking.com B.V., Case Nos. 23-1176, -1177 (Fed. Cir. Dec. 9, 2024), the Federal Circuit affirmed a district court’s judgment of noninfringement, finding that deleting a portion of a definition between a provisional...
The Federal Circuit recently clarified the test for infringement of a system claim when the elements of the system are held by more than one entity. In CloudofChange, LLC v. NCR Corporation, Appeal No. 2023-1111 (Fed. Cir. Dec. 18, 2024) the Court held that not all...
The court in Eastern District of Virginia denied Defendant’s motion for a new trial on damages based on the court’s exclusion of testimony regarding the book of wisdom in Centripetal Networks, LLC v. Palo Alto Networks, Inc., 2:21-cv-00137 (EDVA, Oct. 30, 2024)....
The Federal Circuit recently held that a trial court is permitted to construe claims in deciding a Rule 12(b)(6) motion. In UTTO Inc. v. Metrotech Corp., Appeal No. 2023-1435 (Fed. Cir. Oct. 18, 2024), the Court rejected the plaintiff’s argument that claim...
The principle that claims are not necessarily limited to an embodiment described in the specification is well established. That cannon is not immutable, and unrecited features have been found to nevertheless limit a claim when, for example, the specification...
The United States Court of Appeals for the Federal Circuit (“Federal Circuit”) recently reviewed a new issue not previously before it regarding whether a party was estopped from presenting invalidity arguments in district court after the Patent Trial and Appeal Board...
In its precedential decision in August, the Federal Circuit reversed the district court’s ruling which found certain claims of patents covering Allergan’s Viberzi drug invalid for obviousness-type double patenting (“ODP”). Allergan USA, Inc. v. MSN Laboratories...
In In re Cellect, LLC, the Federal Circuit held that obviousness-type double patenting ("ODP") for a patent that has received a patent term adjustment (PTA), whether or not a terminal disclaimer is required or has been filed, must be based on the expiration date of...