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 Cir. Sep. 22, 2016) (nonprecedential).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 Cir. Feb 10, 2016) (non-precedential).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 …

Federal Circuit Requires PTAB to Consider Previous District Court Claim Construction

Authored by Georg C. Reitboeck, Michael W. Glynn, Ph.D., Claire Rollor Digest of Power Integrations, Inc. v. Lee Power Integrations, Inc. v. Lee, No. 2014-1123 (Fed. Cir. Aug. 12, 2015) (precedential). On appeal from D.D.C. Before Moore, Mayer, and Linn. Procedural Posture: The Board of Patent Appeals and Interferences (the …

Federal Circuit Affirms Dismissal of a Case Against Amazon for Patent-Ineligible Subject Matter, Commending the District Court for Addressing Section 101 “Threshold Issue” on a Motion to Dismiss

Authored by Whitney Remily and Ksenia Takhistova Digest of OIP Tech., Inc. v. Amazon.com, Inc., No. 2012-1696 (Fed. Cir. June 11, 2015) (precedential). On appeal from N.D. Cal. Before Taranto, Mayer, and Hughes. Procedural Posture: Plaintiff-Appellant appeals grant of a motion to dismiss its patent-infringement case under section 101 for failure to …