Attorneys Kerry S. Taylor, Ph.D. and Scott R. Seeley authored “Federal Circuit’s Treatment of Alleged APA Violations at the PTAB” which was published in the January 31, 2018 edition of…

Before Lourie, O’Malley, and Wallach.  Appeal from the Patent Trial and Appeal Board.

Summary:  The PTAB’s finding that an element in a prior art reference is “similar to” a claim limitation, without further explanation, is insufficient to support a finding of anticipation.

            In Medicines Co. v. Hospira, Inc., 2014-1469; 2014-1504 (Dyk, Wallach, Hughes), the Federal Circuit affirmed the district court’s finding of non-infringement but reversed the district court’s determination that an agreement to distribute the Angiomax drug product did not constitute an offer for sale under 102(b).  The panel remanded for a determination of whether the agreement covered the patented invention.  This holding, and the prior en banc holding of the Court in Medicines Co. v. Hospira, Inc., 827 F.3d 1363 (Fed. Cir. 2016) (Medicines I), help clarify what may be an invalidating “offer for sale” or “sale” under 35 U.S.C. § 102(b).

On January 31, two Seattle biotech companies, Seattle Genetics and Cascadian Therapeutics, announced a merger agreement under which Seattle Genetics will acquire Cascadian Therapeutics for $614 million.[1]

Da Volterra, a biotech company developing products in the antibacterial field, has announced results in a human clinical trial for DAV132, a product said to prevent life-treating bacterial infections during antibiotic treatments.

Before Lourie, O’Malley, and Hughes. Appeal from the Patent Trial and Appeal Board.

Summary: Evaluation of “teaching away” requires consideration of whether a reference “criticize[s], discredit[s], or otherwise discourage[s]” modifying the prior art in the manner claimed.

Before Taranto, Clevenger, and Stoll. Appeal from the United States District Court for the District of Delaware. 

Summary: Proceeding to trial despite a party’s violation of a discovery order was not an abuse of discretion where the District Court took adequate steps to ensure the opposing party would not be prejudiced. 

Before Moore, Taranto, and Stoll.  Appeal from the United States District Court for the Northern District of Illinois.

Summary: (1) Terms of degree, including “minimal,” may render claims indefinite if the specification fails to provide “objective boundaries” for the term; and (2) while patent eligibility is ultimately a question of law, the underlying question of whether something is “well-understood, routine, and conventional” is a factual issue.

Before Moore, Taranto, and Stoll.  Appeal from the Patent Trial and Appeal Board.

Summary: In a product-by-process claim, terms that can be equally understood as structural or process limitations should generally be construed as structural limitations. 

Before Moore, Mayer, and Hughes. Appeal from U.S. District Court for the Western District of Texas.                                                   

Summary: The Federal Circuit lacked jurisdiction over a Walker-Process antitrust claim because patent law was not a necessary element of one of the well-pleaded claims.