Chemical Compound Invention, Even if the Inherent Result of a Well-Known Process, is not Obvious if there is no Teaching or Suggestion to Make the Compound in the Prior Art

Millennium Pharmaceuticals v. Sandoz Inc., No. 2015-2066, 2016-1008, 2016-1009, 2016-1010, 2016-1109, 2016-1110, 2016-1283, 2016-1762 (Fed. Cir. July 17, 2017). Before Circuit Judges Newman, Mayer and O’Malley. Takeaway: An invention, albeit the inherent result of a well-known process, is not itself obvious if the prior art references contain no teaching or …

Denial of Attorneys’ Fees Is Reversed for Abuse of Discretion

ADJUSTACAM, LLC v. NEWEGG, INC.: July 5, 2017. Before Reyna, Mayer, Hughes. Takeaway: Denial of attorneys’ fees under § 285 is reviewed under an abuse of discretion standard. While district courts are owed deference in deciding fees motions, that deference is not absolute, and the CAFC will not defer to …

Federal Circuit Clarifies the Scope of On-Sale Bar and Holds that the Absence of Regulatory Approval Before the Critical Date does Not Prevent a Sale and the Completion of Phase III studies and Final FDA Approval are Not Pre-Requisites for the Invention to be Ready for Patenting

HELSINN HEALTHCARE S.A., v. TEVA PHARMS. USA, INC.: May 1, 2017. Before Dyk, Mayer, O’Malley. Takeaway: An agreement contracting the claimed invention for sale contingent on regulatory approval is still a commercial sale, and thus the absence of FDA or other regulatory approval before the critical date does not prevent …

“Electrode” Construed to Be Limited by Dimensions Recited in Specification

Authored by Rose Cordero Prey, Jonathan Thomas, and William Uhr ROCHE DIAGNOSTICS OPERATIONS, INC. V. LIFESCAN INC., No. 2015-1356 (Fed. Cir. Sep. 22, 2016) (nonprecedential).  On appeal from D. Del. Before Prost, Mayer, and Reyna. Procedural Posture: Plaintiff Roche appealed the district court’s order granting summary judgment of non-infringement. In …

Federal Circuit Affirms Invalidity of Driessen Patents

Authored by Mark Chapman, Caryn Harsche, and Kulsoom Hasan Digest of Driessen v. Sony Music Entm’t, No. 2015-2050 (Fed. Cir. Feb 10, 2016) (non-precedential). On appeal from D. Utah. Before Dyk, Mayer, and Hughes. Per Curium. Procedural Posture: Patentee appealed the district court’s grant of summary judgment of invalidity for …