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 …

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 …

An earlier-expiring patent can qualify as an obviousness-type double patenting reference for a later-expiring patent.

  Case: Gilead Sciences, Inc. v. Natco Pharma Limited, No. 2013-1418 (Fed. Cir. Apr. 22, 2014) (precedential). On appeal from the District of New Jersey. Before Chen, Prost and Rader (dissenting). Procedural Posture: Defendant accused infringers appealed final judgment of infringement. CAFC vacated and remanded for further proceedings. Double Patenting: …

Claims that emerge from reexamination do not in and of themselves create a new cause of action.

  Case: Senju Pharma, Co., Ltd. v. Apotex, Inc., No. 2013-1027 (Fed. Cir. Mar. 31, 2014) (precedential). On appeal from D. Del. Before Newman, Plager, and O’Malley. Procedural Posture: Plaintiff patentee appealed grant of summary judgment finding patent invalidity. CAFC affirmed. Res Judicata: Before that district court’s entry final judgment of invalidity, …

CAFC reverses dismissal of declaratory judgment action for lack of subject matter jurisdiction

  Case: Danisco US Inc. v. Novozymes A/S, No. 2013-1214 (Fed. Cir. Mar. 11, 2014) (precedential). On appeal from N.D. Cal. Before Lourie, Proust, and O’Malley. Procedural Posture: Plaintiff appealed dismissal of declaratory judgment action for lack of subject matter jurisdiction. CAFC reversed and remanded. Subject Matter Jurisdiction: Plaintiff filed …