Category Archives: Reissue

Board decision that reissue claims improperly recapture surrendered subject matter affirmed

In Re: General Electric Company (“GE”) Docket No. 2019-1112, -1113, -1115 MOORE, REYNA, CHEN October 18, 2019 Non-precedential Brief Summary: Board decision that reissue claims improperly attempted to recapture surrendered subject matter affirmed (e.g., the attachment limitation was added during … Continue reading

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Board written description decision vacated as conflicting with Ariad (predictability relevant to WD analysis)

In re: Global IP Holdings, LLC Docket Nos. 2018-1426 Moore, Reyna, Stoll July 5, 2019 Brief Summary: Board decision affirming rejection of broadening reissue claims for lacking written description vacated and remanded (e.g., Board’s statement “that the ‘233 patent’s specification … Continue reading

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Federal Circuit invalidates reissue patent invalid for lack of written description (WD)

Forum US, Inc. v. Flow Valve, LLC et al. (FC Docket No. 2018-1765; June 17, 2019) ~ Forum filed DJ action, DC granted SJ to Forum for lack of WD, FV appealed ~ U.S. 8,215,213 relates “to supporting assemblies” (“arbors”) … Continue reading

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Spineology, Inc. v. Wright Medical Technology, Inc.

Docket No. 2017-2388 DYK, O’MALLEY, HUGHES July 6, 2018 Non-precedential Brief summary: DC claim construction and grant of SJ for non-infringement affirmed. Summary: Spineology appealed DC finding that claims 15, 21-23 and 35 of RE42,757 relating to surgical tools (“[a]n … Continue reading

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In Re: Iftikar Khan, Nazin Khan

Docket No. 2017-2207 PROST, MOORE, CHEN February 15, 2018 Non-precedential Brief summary: FC panel affirmed the Board decision that the proposed reissue claims were attempting to improperly recapture subject matter surrendered during prosecution of the parent patent. Summary: Drs. Khan … Continue reading

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In Re: Janssen Biotech, Inc., New York Univ.

Docket No. 2017-1257 PROST, REYNA, WALLACH January 23, 2018 Brief summary: The FC panel affirmed the Board obviousness-type double patenting decision since “a patent owner can[not] retroactively bring the challenged patent within the scope of the § 121 safe harbor … Continue reading

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G.D. Searle LLC, et al. v. Lupin Pharmaceuticals, Inc. et al.

Docket No. 2014-1476 PROST, BRYSON, HUGHES June 23, 2015 Brief Summary: DC decision of invalidity for obviousness-type double patenting affirmed; no § 121 safe harbor for divisional application because it was filed as a continuation-in-part (CIP) and could not retroactively … Continue reading

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Hoyt A. Fleming v. Escort Inc. and Beltronics USA, Inc.

Docket No. 2014-1331, -1371 TARANTO, BRYSON, HUGHES December 24, 2014 Brief Summary: Evidence of prior invention was found to be sufficient and there was no evidence “suppression, concealment, or abandonment” between conception and reduction to practive. Fleming’s failure to “appreciate … Continue reading

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Antares Pharma, Inc. v. Medac Pharma Inc. and MEDAC GmbH

Docket Nos. 2014-1648 DYK, REYNA, TANTARO November 17, 2014 Brief Summary: Reissue claims found invalid for violating the original patent requirement of § 251 (“[t]he original claims are significantly different in scope and coverage than the asserted claims”). Summary: Antares … Continue reading

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Fresenius USA, Inc. et al. v. Baxter International Inc. et al.

Docket No. 2012-1334, -1335 NEWMAN(D), DYK, PROST July 2, 2013 Brief Summary: Cancellation of claims by the PTO must be given effect in a pending infringement litigation. Summary: Fresenius brought an invalidity DJ action against Baxter and Baxter counterclaimed for … Continue reading

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