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Federal Circuit hears arguments in In re Kubin; what will be obvious in biotechnology?

Thursday, the Federal Circuit held oral arguments in In re Kubin, a biotechnology case involving a patent over a gene sequence in humans, and specifically whether the claims were obvious. This was the first precedential decision by the Board of Patent Appeals and Interferences on the issue of obviousness in this field after KSR, so […]

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General disclosure in prior art not enabling for specific pharmaceutical compound’s use in treatment

In a decision last week, the Federal Circuit affirmed a district court's holding that a prior art patent was not enabling and thus did not anticipate the patent-in-suit. Applying the In re Wands factors, the district court held undue experimentation would be required in order to produce the claimed invention based on the prior art's […]

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Federal Circuit: And can mean or, if it makes the claim make sense

In a decision last week, the Federal Circuit affirmed a district court's permanent injunction against a defendant to prevent infringement of a patent. The district court held the patent not invalid and infringed, based in part on a claim construction that construed the word "and" to mean "or." Specifically, based on the specification and other […]

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Federal Circuit reiterates that full scope of claim must be enabled to meet enablement requirement

In a decision last week, the Federal Circuit affirmed a district court's decision holding several claims of two patents invalid for lack of enablement. The district court held that while a portion of the scope of the claims was enabled, the full breadth of the claims were not, and as a result, the claims did […]

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Paper posted on public FTP site not necessarily printed publication; summary judgment reversed

In a decision this week, the Federal Circuit vacated and remanded the district court's determination that the plaintiff's patents-in-suit were invalid as anticipated by another paper that was publicly available via the patentee's FTP site before the critical date for the span of one week, finding genuine issues of material fact as to whether the […]

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Claims to using product made via another claim are dependent claims, noninfringement affirmed

In a battle between two agricultural heavyweights, Monsanto and Syngenta, the Federal Circuit affirmed a district court's ruling that Syngenta did not infringe two Monsanto patents and that a third was invalid for lack of enablement. The patents relate to tolerance to the herbicide glyphosate. The court affirmed the district court's claim construction, noting that […]

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Full scope of claims must be enabled to meet enablement requirement

The Federal Circuit yesterday affirmed a district court's holding of invalidity based on lack of enablement. At issue was a claim that encompassed two different types of structures for side-impact sensing in motor vehicles, a mechanical sensor and an electronic sensor. The court noted that the full scope of a claim must be enabled in […]

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Statements in specification and prosecution history limit claims notwithstanding claim language

In a decision Friday, the Federal Circuit affirmed in part and reversed in part a district court's decision granting summary judgment of noninfringement and invalidity. The Federal Circuit found that the district court had properly construed most of the asserted claims as being limited to "automatic computer determination of the finish positions of teeth" based […]

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Ex parte Kubin: Obviousness at the USPTO in biotechnology

As mentioned previously, the BPAI designated an opinion as precedential today addressing the issues of obviousness, enablement, and the written description requirement in the context of biotechnology inventions. These issues were addressed in the context of patenting a gene involved in regulating the immune system. Addressing the obviousness issue, the board determined that the previous […]

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