Category Archives: Uncategorized

DC grant of SJ affirmed since covenant not to sue and exclusive license directed to different subject matter and not covered by merger clause

Molon Motor and Coil Corp. v. Nidec Motor Corp. Docket No. 2019-1071 LOURIE, REYNA, HUGHES January 10, 2020 Brief Summary: DC grant to SJ barring Molon since there was no merger of two agreements affirmed. Summary: Molon appealed DC grant … 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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IPR invalidity decision vacated and remanded due to erroneous claim construction

SIPCO, LLC v. Emerson Electric Co. Docket Nos. 2018-1856 (IPR2016-01895) LOURIE, MOORE, TARANTO December 20, 2019 Non-precedential Brief Summary: IPR invalidity decision vacated and remanded due to erroneous claim construction (e.g., different claim terms “presume[d]” to “have different meanings”). Summary: … Continue reading

Posted in Claim Construction, Inter Parties Review (IPR), IPR, Uncategorized | Leave a comment

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

Secondary consideration presumption of a nexus only where the product “is the invention disclosed and claimed”

Fox Factory Inc. v. SRAM LLC Docket Nos. 2018-2024, -2025 (IPR2017-00118, -00472) PROST, WALLACH, HUGHES December 18, 2019 Brief Summary: Board IPR decision of no obviousness vacated and remanded for reevaluation of secondary consideration evidence with respect to the required … Continue reading

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

§ 271(g) held not to be limited by single-entity requirement; label-related copyright claims remanded

Syngenta Crop Protection, LLC v. Willowood, LLC et al. Docket Nos. 2018-1614, -2044 REYNA, TARANTO, STOLL December 18, 2019 Brief Summary: DC dismissal of copyright claims relating to Syngenta’s label remanded as premature. DC erred by imposing single-entity requirement on … Continue reading

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