Category Archives: Inherency

Galderma’s ivermectin claims not inherently anticipated since “claimed efficacy limitations” not disclosed by single prior art reference

Galderma Labs., L.P. et al. v. Teva Pharmaceuticals, Inc. Docket No. 2019-2396, -1213 MOORE, O’MALLEY, STOLL January 29, 2020 Non-precedential Brief Summary: DC finding of inherent anticipation reversed as it relied on a second reference to provide limitations missing from … Continue reading

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Genentech’s antibody purification claims correctly found anticipated or obviousness in IPR, Fed. Cir. decides

Genentech, Inc. v. Hospira, Inc. (United States, Intervenor) Docket Nos. 2018-1933 (IPR2016-01837) PROST, NEWMAN, CHEN January 10, 2020 Brief Summary: Board’s IPR anticipation and obviousness findings affirmed. Summary: Genentech appealed PTAB (“Board”) IPR final written decision (FWD) finding certain claims … Continue reading

Posted in Anticipation (35 USC 102), Inherency, Inter Parties Review (IPR), IPR, Obviousness, Obviousness (Secondary Considerations), Uncategorized | Leave a comment

“[R]esult that was inherent in the prior art” cannot overcome obviousness based on inherency

Hospira, Inc. v. Fresenius Kabi USA, LLC Docket Nos. 2019-1329, -1367 NEWMAN, LOURIE, TARANTO January 9, 2020 Brief Summary: DC obviousness judgment of affirmed as “wherein” clause only describes “a result that was inherent in the prior art”. Summary: Hospira … Continue reading

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Persion’s Zohydro ER claims invalid for obviousness and lack of written description (“inherently result in the claimed [PK] parameters”, functional limitations too broad)

Persion Pharmaceuticals LLC v. Alvogen Malta Operations Ltd. Docket Nos. 2018-2361 O’MALLEY, REYNA, CHEN December 27, 2019 Brief Summary: DC findings of invalidity of Persion’s hepatic insufficiency claims related to Zohydro ER for obviousness and no WD affirmed. Summary: Persion … Continue reading

Posted in Functional limitations, Inherency, Method claims, Obviousness, Obviousness (Secondary Considerations), Uncategorized, Written description | Leave a comment

ITC finding of no indefiniteness or invalidity for anticipation or obviousness affirmed

Guangdong Alison Hi-Tech Co. v. Int. Trade Comm. (ITC), Aspen Aerogels, Inc. Docket No. 2018-2042 DYK, CHEN, STOLL August 27, 2019 Brief Summary: ITC finding of no indefiniteness or invalidity for anticipation or obviousness affirmed. Summary: Guangdong Alison Hi-Tech Co. … Continue reading

Posted in Anticipation (35 USC 102), Indefiniteness, Inherency, International Trade Commission, Obviousness, Prosecution History Estoppel, Uncategorized | Leave a comment

Federal Circuit reverses DC and finds Horizon’s ‘907 and ‘285 Vimovo® Orange Book patents invalid for lack of written description

Nuvo Pharmaceuticals, Horizon Medicines LLC v. Dr. Reddy’s Labs. et al. Docket No. 2017-2473, -2481, -2484, -2486, -2489, -2491-93 PROST, CLEVENGER, WALLACH May 15, 2019 Brief summary: DC reversed as FC panel found found Nuvo/Horizon’s ‘907 and ‘285 claims to … Continue reading

Posted in Generics / ANDA, Inherency, Written description | Leave a comment

U.S. Water Services, Inc., Roy Johnson v. Novozymes A/S et al.

Docket No. 2015-1950, -1967 WALLACH, HUGHES, STOLL December 15, 2016 Update (April 19, 2019 (non-precedential)): On remand of this decision (“US Water I”), the jury found no inherent anticipation and awarded damages of about $7.5 million. But the DC partially … Continue reading

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Grunenthal Gmbh et al. v. Alkem Labs. Ltd., Hikma Pharm., Actavis et al.

Docket No. 2017-1153, -2048-50 REYNA, TARANTO, CHEN March 28, 2019 Brief summary: DC decisions of nonobviousness of Grunenthal’s polymorph claims, no induced or contributory infringement due to section viii carve-out, and specific utility of the claimed polymorph affirmed. Summary: Alkem … Continue reading

Posted in Anticipation (35 USC 102), Contributory Infringement, Generics / ANDA, Inducement to Infringe, Inherency, Obviousness, Utility | Leave a comment

In Re: Qapsule Technologies, Inc.

Docket No. 2018-1772 NEWMAN, CHEN, STOLL March 11, 2019 Non-precedential Brief summary: Board decision of anticipation based on inherent disclosure affirmed. Summary: Qapsule appealed PTAB (“Board”) decision finding certain claims of its application directed to a synthetic pharmaceutical capsule anticipated … Continue reading

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Personal Web Technologies, LLC v. Apple, Inc.

Docket No. 2018-1599 (IPR2013-00596) MOORE, TARANTO, CHEN March 8, 2019 Brief summary: Board’s IPR decision that PersonalWeb’s claims were unpatentable for obviousness reversed because “the Board’s reliance on inherency…was improper” and “Apple provided no other basis for” the disputed claim … Continue reading

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