In widely watched biotech case, skepticism by others in the art and other factors give rise to a lack of a reasonable expectation of success, and thus a lack of interference-in-fact

Ryan Chirnomas | December 17, 2018

Regents of the University of California et al. v. Broad Institute, Inc., et al.

September 21, 2018

Before Prost, Schall and Moore.  Opinion by Moore.


The CAFC upheld the PTAB’s decision of the lack of an interference-in-fact between UC’s claims generically directed to the CRISPR-Cas9 gene editing system in any context and Broad’s claims directed to the CRISPR-Cas9 system in eukaryotes specifically.  The CAFC affirmed the PTAB’s weighing of substantial evidence with respect to the likelihood of success of one skilled in the art based on UC’s claims, in view of statements by the inventors and experts, as well as the details of other gene editing system.  The CAFC dismissed UC’s arguments regarding an alleged “specific instructions” test and evidence of simultaneous invention.

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To narrow, or not to narrow a claim without lexicography or disavowal in a patent specification: the U.S. Supreme Court is asked to answer the question.

Yasuhide Ono | December 11, 2018

Cave Consulting Group, LLC v. OptumInsight, Inc., 725 Fed. App’x 988 (Fed. Cir. 2018) (nonprecedential) (Case No. 2017-1060)

 March 21, 2018 (Rehearing Denied: August 14, 2018; Petition for A Writ of Certiorari Filed: November 2, 2018)

Before Lourie, Dyk and Taranto, Circuit Judges. Court opinion by Lourie.


In a nonprecedential opinion, in view of the specification’s consistently limiting description, the Federal Circuit reversed the district court’s claim construction of “weighted episode of care statistics” recited in a disputed independent claim as including direct standardization where some of dependent claims specifically provide that the calculating of weighted episode of care statistics utilizes direct standardization. Accordingly, the Court vacated the judgment of infringement and award of damages because the error in the claim construction is dispositive of the infringement issue based on undisputed facts. A petition for a writ of certiorari has been filed to ask the U.S. Supreme Court if narrowing claims without lexicography or disavowal in a patent specification may be justified.

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Foreign manufacturer’s intent to induce infringement in the U.S. inferred from large worldwide market share

Ching Kwok | December 7, 2018

Enplas Display Device Corp. v. Seoul Semiconductor Co.

November 19, 2018

Before Newman, Hughes, and Stoll. Opinion by Stoll.


The CAFC affirmed the district court’s judgment of no invalidity and of induced infringement, although it vacated most of the damages award. The induced infringement issue was a “close question” because there was no direct evidence that Enplas actually knew that certain lenses it was selling outside the U.S. would be incorporated into TVs sold in the U.S. But the court held that based mainly on Enplas’ large worldwide market share and in the context of its previous relationship with SSC, there was enough circumstantial evidence to meet the specific intent requirement.

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A Tale of Two Printed Publications

Cindy Chen | November 8, 2018

GoPro, Inc. v. Contour IP Holding LLC; 

November 1, 2018

Before Reyna, Wallach, and Hughes. Opinion by Lourie.


Acceleration Bay LLC v. Activision Blizzard, Inc.

November 6, 2018

Before Prost, Moore, and Reyna.  Opinion by Moore.


It was a flexible standard. It was a narrow standard. It was a sales catalog at a trade show that those of ordinary skill in the relevant art may not have attended. It was a technical report uploaded to a university subject matter-specific library website. The Federal Circuit determined that the sales catalog was a prior art “printed publications” within the scope of 35 U.S.C. 102, but not the technical report.

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