The Federal Circuit indirectly imports limitations from the specification into the claims through claim construction
| April 24, 2017
The Medicines Company v. Mylan Inc. Etc.
April 6, 2017
Before Dyk Wallach, and Hughes. Opinion by Dyk.
Summary
Mylan submitted two Abbreviated New Drug Applications (“ANDA”) to seek approval of Food and Drug Administration (“FDA”) for selling generic bivalirudin drug products before the expiration of patents-in-suit: the ‘727 patent and the ‘343 patent. In its ANDA, Mylan stated that it would limit the Asp9 level of its generic product to less than 2.0 percent. Medicines sued Mylan for infringement of the ‘727 and ‘343 patents. Mylan filed counter-claims seeking declaratory judgments of invalidity. The district court held that Mylan infringed the ‘727 patent, but not the ‘343 patent. The Federal Circuit reverses in part, and held that Mylan does not infringe both patents.
Back to Basics: In re Chudik offers a refresher on the law of anticipation for functional limitations
| April 17, 2017
In re Chudik
March 27, 2017
Before Dyk, Reyna, and Stoll. Opinion by Reyna.
Summary
This decision is a refresher on the basic law of anticipation for functional claim elements. A prior art does not anticipate a functional claim element merely because it is “capable of” performing the recited function, but rather, such capability must be achieved without “distortion” or “modification” to the prior art.
CAFC refuses to second guess a district court determination on a motion for attorney fees under 285.
| April 13, 2017
University of Utah v. Max-Planck-Gesellschaft zur Foerderun der Wissenschaften E.V., et al.
March 23, 2017
Before O’Malley, Reyna and Wallach. Precedential Opinion by Reyna, joined by O’Malley and Wallach
Summary:
University of Utah (UUtah) sued Max-Planck et al. (Max-Planck) for correction of ownership for several of Max-Planck patents (the Tuschl II patents). The district court granted Max-Planck’s motion for summary judgment but refused to grant its motion for attorney fees under 285. The CAFC found that the district court did not abuse its discretion and affirmed the refusal to grant the 285 motion.
Derivation not demonstrated by conception of an idea different from claimed invention, even where the idea would make the claimed invention obvious
| April 5, 2017
Cumberland Pharmaceuticals v. Mylan Institutional LLC
January 26, 2017
Before Moore, Reyna and Taranto. Opinion by Taranto.
Summary
In an unusual argument, Mylan posited that Cumberland’s employee was not the inventor of a patent, but rather that the inventor was “someone at the FDA”. Mylan based this assertion on the FDA’s seeking justification for an ingredient in an earlier formation which was excluded—without a direct substitute—in the claimed later formulation.
