Attorney:
David Inglefield
July 23, 2025
On June 30, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision regarding transitional phrase claim construction, reversing the decision of the Patent Trial and Appeal Board (PTAB) in Eye Therapies, LLC. v. Slayback Pharma, LLC. The PTAB had previously ruled the claims of U.S. Patent No. 8,293,742 (the ‘742 patent) unpatentable as obvious in a inter partes review brought by Slayback. During the inter partes review, the parties had disagreed on the construction of the transitional phrase “consisting essentially of” in the ‘742 patent. The Court found that the Board had incorrectly applied the conventional open construction of the transitional phrase, which was at odds with the prosecution record. This demonstrates how prosecution history can alter a phrase’s typical meaning.<... Read more
Attorney:
Matthew Hampton
July 15, 2025
On 18th June 2025, the Enlarged Board of Appeal of the European Patent Office issued Decision G1/24. During Appeal Proceedings (T0439/22) in the Opposition to European Patent No. 3076804B1 (Philip Morris Products S.A.) filed by Yunnan Tobacco International Co., Ltd, the following questions had been referred by the Board of Appeal (Referring Board) to the Enlarged Board of Appeal and subsequently found admissible by that Enlarged Board:<... Read more
Attorney:
Derek Lightner, Ph.D.
April 24, 2025
In the appeal of USSN 17/963,407 (Appeal 2025-001881) to the Patent Trial and Appeal Board (PTAB), a finding of obviousness by Primary Examiner Drew Becker, supported by Supervisory Patent Examiner (SPE) Erik Kashnikow and Review Quality Assurance Specialist (RQAS) Jennifer McNeil from the Office of Patent Quality Assurance (OPQA), was reversed by the PTAB for the improper reliance on hindsight. The decision can be found at https://patentcenter.uspto.gov/applications/17963407/ifw/docs?application=.<... Read more
Attorney:
Lucas Koziol, Ph.D.
April 7, 2025
Restem, LLC, v. Jadi Cell, LLC (see the Resources link below for a copy of the Opinion)<... Read more
Attorney:
Richard D. Kelly
March 27, 2025
In Maquet Cardiovascular LLC. v. Abiomed Inc., Appeal No. 2023-2045, March 21, 2025, the Federal Circuit provided guidance as to when the prosecution history of one member of a patent family may act as an estoppel in the claim construction of another member of the family. At issue was the construction of claims 1 and 24 of U.S.P. 10,238,783 (‘783) in view of the prosecution histories of its parent application, U.S.P. 9,789,238 (‘238) and great-great-grandparent application U.S.P. 8,888,728 (‘728). The ‘783 patent was directed to blood pumps which could be placed in a patient’s vascular system without using a supplemental guide means. The guide was integrated into the apparatus.<... Read more
Attorney:
David Inglefield
March 10, 2025
On February 13, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed the decision of the International Trade Commission (ITC) in US Synthetic Corp. v. International Trade Commission, issuing a precedential decision regarding subject matter eligibility important to the pharmaceutical and other life science industries. The ITC had previously ruled that US Synthetic’s composition of matter claims reciting measured properties of a composition were directed to a patent-ineligible abstract idea under 35 U.S.C. § 101. The CAFC found that the claims were indeed related to concrete structures, not patent-ineligible abstract ideas, and affirmed the lower court’s finding regarding enablement.<... Read more
Attorney:
Matthew Hampton
March 3, 2025
The Unified Patent Court (UPC) is an international court set up by participating European Union Member States to deal with the infringement and validity of both Unitary Patents1 and European patents. The Agreement on a Unified Patent Court (UPCA) entered into force on 1st June 2023 with the intention of obviating costly parallel patent litigation in the participating European Union Member States and thereby enhancing legal certainty for rights holders.<... Read more
Attorney:
Xiaohua (Joyce) Guo, Ph.D.
February 18, 2025
In a precedential opinion issued on January 10, 2025, the United States Court of Appeals for the Federal Circuit reversed a district court’s ruling that had invalidated claims 1-4 of U.S. Patent No. 8,101,659 (“the ’659 patent”) for lack of written description.<... Read more
Attorney:
Diane Jones
February 14, 2025
Re: US2016/0331260A1 “Asystole detection for cardiopulmonary resuscitation”, Applicant Koninklijke Philips N.V.<... Read more
Attorney:
Robert W. Downs
February 7, 2025
Personalized medicine is especially intriguing, as a problem with most drugs are the potential side effects. From a naive perspective, administering drugs may appear to be a trial and error process: take this for two weeks and come back with a follow up visit. If you have any side effects, contact me immediately. Wouldn’t it be nice if a drug had the effect it was meant to have without the possibility of side effects?<... Read more