Category Archives: Reissue

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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Greeliant Systems et al. v. Xicor, LLC

Docket No. 2011-1514 LINN, PLAGER, DYK August 22, 2012 Brief summary: Under the rule of recapture, a patentee is “bound by the arguments that it made before the examiner” regardless of the ultimate reasons for allowance. Summary: Xicor appealed USDC … Continue reading

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In re Erick P. Staats and Robin D. Leash (“In re Staats”)

Docket No. 2010-1443 DYK, O’MALLEY(C), REYNA March 5, 2012 Brief summary: As long as a broadening reissue application is timely filed, a continuing application therefrom including claims not related to the claims of the original patent or reissue application may … Continue reading

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