USPTO Begins Effort to Abandon Broadest Reasonable Construction Standard in Contested PTO Proceedings

Less than two months after Andrei Iancu was confirmed as the new Director of the USPTO, the Office issued a Notice of Proposed Rulemaking concerning the claim construction standards employed in contested USPTO proceedings, including IRPs, PGRs, and CBMs.  The proposed change would abandon the broadest reasonable construction standard currently used for unexpired patents in […]

A Thin Gray Line: Reading Claims in Light of the Specification Versus Impermissibly Reading Limitations into the Claims

There is a fine and often ambiguous line between improperly importing limitations from the specification into the claims and interpreting claims in light of the specification.  The Federal Circuit recently drew that line in The Medicines Company v. Mylan, Inc., reversing a lower court’s judgment that Plaintiff Mylan’s proposed bivalirudin formulation would infringe U.S. Patent […]

Federal Circuit Confines Exception to Closed-Ended Interpretation of “Consisting of” Transition

On Friday, the Federal Circuit weighed in on the exception to the closed nature of the “consisting of” transition in patent claims, holding that the exception is more limited than perhaps previously thought.  In Shire Development, LLC v. Watson Pharmaceuticals, Inc., the Federal Circuit reversed the district court’s infringement finding, holding that a claimed Markush […]

PTAB Rejects Evidence Presented for First Time in Reply Papers and Upholds Patent

Altaire Pharmaceuticals Inc. filed a Petition for a post-grant review of claims 1 to 13 of U.S. Patent No. 8,859,623 (“the 623 patent”) owned by Paragon Bioteck, Inc.  The primary issue was whether Petitioner’s product—which qualified as 102(a) prior art—met the limitations of the ’623 patent claims and therefore rendered the claims obvious.  The Board […]

District of Delaware Finds Terms of Namenda XR® Patents Indefinite During Claim Construction

On January 5, 2016, Chief Judge Leonard P. Stark of the District of Delaware found the claim language of several patents covering Namenda XR®—Forest Laboratories, Inc.’s extended-release drug for treating Alzheimer’s-type dementia—indefinite. Forest Labs., Inc. et. al v. Teva Pharm. USA, Inc. et al., Civ. No. 14-cv-00121-LPS (D. Del. Jan. 5, 2016). Notably, the court […]

Federal Circuit Narrows “Factual Findings” Requiring Deference During Claim Construction

The Disposition:  On remand from the Supreme Court, the Federal Circuit affirmed its earlier decision finding the claims of Teva’s Orange Book patent for Copaxone invalid as indefinite.  See Teva Pharmaceuticals USA, Inc. et al. v. Sandoz, Inc. et al., No. 12-1567 (June 18, 2015). Case History.  In its initial review, the Federal Circuit reversed […]

Federal Circuit Finds a Role for Extrinsic Evidence Post-Teva

Last week, in Virginia Innovation Sciences (“VIS”) v. Samsung, the Federal Circuit provided some indication of the circumstances under which it would defer to a district court’s evaluation of extrinsic evidence in the post-Teva world.  We have previously written about the Supreme Court’s 2015 Teva v. Sandoz opinion, which overturned long-standing precedent, holding that while […]

Federal Circuit Renders Its First Decision of an IPR Appeal

In the first Federal Circuit ruling of an appeal from an inter partes review (“IPR”) decision, the Court held that the Patent Trial and Appeal Board (“the PTAB”) correctly applied the broadest reasonable interpretation standard to construct patent claims, held that it lacked jurisdiction to review the PTAB’s decision to institute an IPR, affirmed the […]

Supreme Court Reverses Longstanding Federal Circuit Precedent, Orders Claim Construction Deference

The Federal Circuit has long reviewed all claim construction orders “de novo” – without any deference to factual issues underlying the district court’s decision.  Today, the Supreme Court overturned that longstanding precedent, ruling that findings of fact made as part of a claim construction order should be reviewed for clear error. Teva Pharmaceuticals USA Inc., et […]

Supreme Court Questions Standard for Appellate Review of Claim Construction

Last week, the Supreme Court held arguments in the closely watched case of Teva v. Sandoz.  Teva won at the district court level based on claim construction arguments.  The Federal Circuit reversed, affording no deference to the district courts factual findings underlying claim construction.  In March, the Supreme Court granted certiorari to answer one lone […]