Expenses Incurred by Government Attorneys during a 35 U.S.C. § 145 Appeal Can Be Recovered by the USPTO

NANTKWEST, INC. v. MATAL: June 23, 2017.  Before Prost, Dyk, and Stoll.   Takeaway: Expenses incurred by USPTO during a 35 U.S.C. § 145 appeal include a pro-rata share of the incurred attorneys’ fees. The American Rule denying attorneys’ fees to the prevailing party does not apply when applicable statute specifically and …

The CAFC Vacated the Northern District of California’s Claim Construction Because the District Court Improperly Limited the Claims Based on Prosecution History Disclaimer

Tech Properties v. Huawei (2016-1306), March 3, 2017.  Before Judges Moore, Wallach, and Chen. Takeaway: A district court may only limit claims based on prosecution disclaimer to the extent that the patentee makes clear and unmistakable disclaimers. If a district court limits the claims of a patent more narrowly than …

The CAFC Vacated a PTAB Finding of Obviousness Because, By Providing an Overly Broad Constructions, the PTAB Read Key Limitations out of the Claims

Los Angeles Biomedical v. Eli Lilly (2016-1518), February 28, 2017.  Before Judges Newman (concurring-in part and dissenting-in-part), Bryson, and Moore. Takeaway: The PTAB’s overly-broad claim constructions resulted in a decision that lacked the necessary factual support needed to find the claims unpatentable as being obvious under the narrower CAFC constructions. …

When the Examiner Agrees With an Attorney’s Argument Presented in an Inter Partes Reexamination, But Cites to No Substantial Evidence, There is no Factual Basis for the Examiner’s Finding That Patent Claims are Unpatentable as Being

Icon Health v. Strava, (2016-1475) February 27, 2017.  Before Judges O’Malley (concurring-in part and dissenting-in-part), Reyna, and Wallach. Takeaway: In order to withstand a challenge on appeal, a determination by the PTAB that the claims of a patent would have been obvious must be supported by substantial evidence, and be …

The Federal Circuit Finds Drug Does Not Satisfy Markush Group Requirements; Reverses District Court Finding of Infringement

SHIRE DEV., LLC v. WATSON PHARM., INC.: Feb. 10, 2017.  Before Prost, Taranto, and Hughes. Takeaways: An ANDA product that does not satisfy the Markush group requirements of the claim does not infringe. The phrases “consisting of” and “consists of” in a Markush claim will create a “very strong presumption” …