Author Archives: Patrick J. Halloran, Ph.D., J.D.

IPR claim construction and obviousness findings affirmed (insufficient evidence of nexus between claims and license agreements)

Siemens Mobility, Inc. v. USPTO Docket No. 2019-1732, -1752 (IPR2017-01669, -02044 LOURIE, MOORE, O’MALLEY September 8, 2020 Non-precedential Brief Summary: Board IPR claim construction and obviousness conclusions affirmed (e.g., insufficient evidence nexus between claims and secondary considerations (license agreements)). Summary: … Continue reading

Posted in Inter Parties Review (IPR), IPR, Obviousness, Obviousness (Secondary Considerations) | Leave a comment

DC claim construction affirmed; refusal to correct inventorship vacated/remanded (“AIA did not narrow the meaning of ‘error’”)

Egenera, Inc. v. Cisco Systems, Inc. Docket No. 2019-2015, -2387 PROST, REYNA, STOLL August 28, 2020 Brief Summary: DC claim construction affirmed; refusal to allow Egenera to correct inventorship vacated/remanded (“AIA did not narrow the meaning of ‘error’”). Summary: Egenera … Continue reading

Posted in America Invents Act, Claim Construction, Inventorship | Leave a comment

DC erroneously constructed “antibody” and “antibody fragment”, FC panel finds

Baxalta, Inc. et al. v. Genentech, Inc. et al. Docket No. 2019-1527MOORE, PLAGER, WALLACH August 27, 2020 Brief Summary:  DC non-infringement finding vacated and remanded due to erroneous construction of “antibody” and “antibody fragment”. Summary:    Baxalta appealed DC judgment based … Continue reading

Posted in Claim Construction, Claim Differentiation, Uncategorized | Leave a comment

DC grant of SJ affirmed due to “an unenforceable agreement to agree”

Phytelligence, Inc. v. Washington State UniversityDocket No. 2019-2216PROST, REYNA, STOLLAugust 27, 2020 Brief Summary: DC grant of SJ to WSU affirmed since option agreement was “an unenforceable agreement to agree”, not an “agreement with open terms” that could be deciphered … Continue reading

Posted in Licensing, Uncategorized | Leave a comment

IPR decision finding Anacor’s KERYDIN® patents invalid for obviousness affirmed

Anacor Pharmaceuticals, Inc. v. Flatwing Pharmaceuticals, LLC Docket No. 2019-2264-2267 (IPR2018-00168-00171, -01358-01361) PROST, NEWMAN (D), HUGHES August 27, 2020 (Non-precedential) Brief Summary: IPR decisions finding Anacor’s tavaborole (5%) (KERYDIN®) patents invalid for obviousness affirmed (e.g., “concentration is a result-effective variable”). … Continue reading

Posted in Inter Parties Review (IPR), IPR, Obviousness, Obviousness-Teaching Away | Leave a comment

DC denial of Takeda’s permanent injunction affirmed based on License Agreement definitions

Takeda Pharm. U.S.A., Inc. v. Mylan Pharm. Inc. Docket No. 2020-1407, -1417 PROST, NEWMAN (D), HUGHES July 31, 2020 Brief Summary: DC decisions denying Takeda a permanent injunction affirmed due to Final Court Decision regarding Licensed Patents as defined in … Continue reading

Posted in Generics / ANDA, Licensing | Leave a comment

IPR obviousness decision vacated and remanded for insufficient explanation

Alacritech, Inc. v. Intel Corp., et al. Docket No. 2019-1467, -1468 (IPR2017-01409-10, -01736-7, IPR2018-00338-9) MOORE, CHEN, STOLL July 31, 2020 Brief Summary: IPR obviousness decision vacated and remanded as Board’s explanation was not “articulate a satisfactory explanation for its action”. … Continue reading

Posted in Inter Parties Review (IPR), IPR, Obviousness, Obviousness-Teaching Away | Leave a comment

DC infringement decision affirmed for one patent, preambles found limiting as to two others, money damages affirmed, injunction for two of four accused products vacated

Bio-Rad Labs., Inc., The Univ. of Chicago v. 10X Genomics Inc. Docket No. 2019-2255, -2285 NEWMAN, O’MALLEY, TARANTO August 3, 2020 Brief Summary: DC decision of infringement of ‘083 patent under DOE affirmed; preamble found to limit ‘407 and ‘193 … Continue reading

Posted in Claim Vitiation, Damages, Doctrine of equivalents, Infringement, Willfullness | Leave a comment

Revised FC opinion maintains invalidity of one independent claim as claiming a natural law and nothing more but vacates and remands DC invalidity decision regarding second independent claim as including “positioning” limitation”

American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al. Docket No. 2018-1763 NEWMAN, TARANTO, STOLL October 3, 2019 (revised July 30, 2020) Update (July 30, 2020): Original FC opinion affirmed the DC decision that AA’s claims are ineligible … Continue reading

Posted in Patent Eligibility (101), Patentability | Leave a comment

DC patent ineligibility holding for Illumina’s fetal DNA-related claims again reversed

Illumina, Inc., Sequenom, Inc. v. Ariosa Diagnostics, Inc. et al. Docket No. 2019-1419 LOURIE, MOORE, REYNA March 17, 2020 Update (August 3, 2020): In a revision of its March 17, 2020 opinion reversing the DC’s 101 ineligibility decision, the FC … Continue reading

Posted in Patent Eligibility (101), Patentability | Leave a comment