Category Archives: Reissue

Board decision that reissue claims improperly recapture surrendered subject matter affirmed

Posted on October 23, 2019 by Patrick J. Halloran, Ph.D., J.D.

In Re: General Electric Company (“GE”) Docket No. 2019-1112, -1113, -1115 MOORE, REYNA, CHEN October 18, 2019 Non-precedential Brief Summary: Board decision that reissue claims improperly attempted to recapture surrendered subject matter affirmed (e.g., the attachment limitation was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

Posted on July 10, 2019 by Patrick J. Halloran, Ph.D., J.D.

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)

Posted on June 18, 2019 by Patrick J. Halloran, Ph.D., J.D.

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.

Posted on July 9, 2018 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2017-2388 DYK, O’MALLEY, HUGHES July 6, 2018 Non-precedential Brief summary: DC claim construction and grant of SJ for non-infringement affirmed.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

Posted on February 19, 2018 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2017-2207 PROST, MOORE, CHEN February 15, 2018 Non-precedential Brief summary: FC panel affirmed the Board decision that the proposed reissue claims were attempting to improperly recapture subject matter surrendered during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.

Posted on January 24, 2018 by Patrick J. Halloran, Ph.D., J.D.

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.

Posted on June 25, 2015 by Patrick J. Halloran, Ph.D., J.D.

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.

Posted on December 31, 2014 by Patrick J. Halloran, Ph.D., J.D.

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

Posted on November 18, 2014 by Patrick J. Halloran, Ph.D., J.D.

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.

Posted on July 15, 2013 by Patrick J. Halloran, Ph.D., J.D.

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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