Claimed inventions of a reissue patent must be clearly and unequivocally disclosed in the original specification

Kumiko Ide | December 17, 2014

Antares Pharma, Inc. v. Medac Pharma Inc., et al.

November 17, 2014

Panel: Dyk, Reyna, and Taranto.  Opinion by Dyk.


The Federal Circuit found the asserted reissue claims invalid for failure to comply with the “original patent” requirement of 35 U.S.C. § 251.  Under § 251, the original patent specification must adequately disclose the later-claimed features.  Here, the Federal Circuit found that the original specification failed to clearly and unequivocally disclose the inventions of the asserted claims of the reissue patent.


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Upon Further Review, the Ruling on the Field Stands – Federal Circuit Sustains PTO’s Refusal to Withdraw Terminal Disclaimer

Darrin Auito | December 10, 2014

Japanese Foundation for Cancer Research v. Lee

December 9, 2014 (Federal Circuit)

Panel:  Prost, Dyk, Taranto. Opinion by Prost


In Japanese Foundation for Cancer Research v. Lee (2014), the Federal Circuit reversed the district court’s determination on summary judgment that the United States Patent & Trademark Office (“PTO”) acted arbitrarily and capriciously, and abused its discretion, when it refused to withdraw a terminal disclaimer on U.S. Pat. No. 6,194,187 (“’187 patent”).  The Federal Circuit held that the PTO did not act arbitrarily or capriciously, or abuse its discretion in declining to use any inherent authority that it may have in withdrawing the terminal disclaimer on the ’187 patent that the Japanese Foundation for Cancer Research’s (“Foundation”) attorney of record filed in accordance with the PTO’s regulations.

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Surviving Alice Gone Wild

John Kong | November 26, 2014

Before the Supreme Court’s decision in Alice Corp. v CLS Bank Int’l [1], Judge Moore said “this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.”[2] This concern is premised on about twenty years of patent practice grounded in the en banc 1994 Federal Circuit decision in In re Alappat which previously established the “special purpose computer” justification for patent eligibility under 35 USC §101 for computer-implemented inventions.[3]  The Alice decision essentially eliminated the “special purpose computer” bright line rule as applied generally to computer-implemented inventions.  The new Mayo 2-part §101 test for computer-implemented inventions is, however, fraught with issues from the lack of guidance on how to properly apply it.  Some strategic arguments for surviving a §101 attack are presented in this article, as well as a new way to address what is “significantly more.”

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CAFC redefines the singular phrase “a patient” as a plural patient population

Ryan Chirnomas | November 18, 2014

Braintree Laboratories, Inc. v. Novel Laboratories, Inc.

April 22, 2014

Panel: Dyk, Prost Moore. Majority opinion by Prost. Concurrence by Dyk. Dissent by Moore.


In this ANDA litigation, the claims recited a composition for purgation of the colon of “a patient”. The majority imported the preamble phrase of “a patient” into the claim, and also interpreted this as not a single patient, but rather a “patient population”. Judge Moore dissented on this point. Additionally, Judge Dyk dissented on the grounds that the majority based its analysis on an accused infringing product different from the subject of the ANDA application, contrary to Hatch-Waxman rules.

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