TEVA PHARMACEUTICALS USA v. SANDOZ INC. (Fed. Cir. 2015) (P) – Prosecution history estoppel applies regardless of the scientific accuracy of the statements made

by | Jun 18, 2015 | [sub] prosecution history, Estoppel / Disclaimer

A statement made during prosecution may be used to define a claim term regardless of the scientific accuracy of that statement. Here, for example, in response to identical indefiniteness rejections in separate child applications regarding the claim term “molecular...

CEPHALON, INC. v. ABRAXIS BIOSCIENCE, LLC (Fed. Cir. 2015) (NP) – A definition need only be widely rather than universally accepted to form the basis for claim construction

by | Jun 17, 2015 | [sub] extrinsic evidence, Claim Interpretation

A definition need only be widely accepted rather than universally accepted to form a proper basis for claim construction. Here, for example, although the patentee noted that the definition of the claimed “nanoparticles” and “microparticles” as being between 1 to 1000...

RICHARD WILLIAMSON v. CITRIX ONLINE, LLC (Fed. Cir. 2015) (P, en banc) – No heightened bar for overcoming presumption that a limitation without the word “means” escapes § 112, ¶ 6

by | Jun 16, 2015 | [sub] invocation, Means Plus Function

Despite a decade of precedent to the contrary, the heightened bar to overcoming the presumption that a limitation expressed in functional language without using the word “means” is not subject to § 112, ¶ 6 has been overruled. Here, for example, the claimed...

MICROSOFT CORPORATION v. PROXYCONN, INC. (Fed. Cir. 2015) (P) – Substitute claims submitted during IPR must be shown patentable over all the prior art of record

by | Jun 16, 2015 | [sub] inter partes review, PTO Procedure

A patentee may be required to show that substitute claims submitted during IPR are patentable over the prior art of record, including prior art that was not part of the original bases of unpatentability for which review of the claims being substituted was instituted....

ARIOSA DIAGNOSTICS, INC v. SEQUENOM, INC. (Fed. Cir. 2015) (P) – The process steps themselves must be new and useful when encompassing a natural phenomenon

by | Jun 12, 2015 | [sub] biotech, Subject Matter Eligibility

For process claims that encompass natural phenomenon, the process steps themselves are the additional features that must be new and useful. Here, for example, using a newly discovered source of cell-free fetal DNA (“cffDNA”) to conduct fetal screening was found to be...