Written Description Requirement for Negative Claim Limitations in Flux as Federal Circuit Panel Reverses Previous Panel Decision

Posted at 21:24h July 11, 2022 in Indefiniteness, Invalidity, Section 112 by Carlson Caspers
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Section 112 written description requirements present a challenge for patentees claiming negative limitations, as the extent to which a specification needs to disclose the absence of a feature is not entirely clear, especially following the recent Federal Circuit case Novartis v. HEC Pharm Case No. 1:18-cv-01043-KAJ (Fed. Cir. June 21, 2022). In its review of negative […]

Judge Lourie Questions Patentability of Product Claims Having Limitations Directed to Results and Not Structure

Posted at 21:48h December 11, 2017 in Indefiniteness, Intended result by Todd S. Werner
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Carlson Caspers successfully defended an indefiniteness verdict at the Federal Circuit in Forest Laboratories, Inc. v. Teva Pharmaceuticals USA, Inc.  The asserted claims were directed to extended-release formulations of memantine, and were listed in the Orange Book for Forest’s Namenda XR® product.  The applicants chose to define their formulation based on pharmacokinetic principles rather than […]

Federal Circuit Reverses Indefiniteness Ruling Based on Point of Novelty Analysis

Posted at 20:24h September 30, 2016 in Indefiniteness by Carlson Caspers
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In Cox Communications, Inc. v. Sprint Communication Co., the Federal Circuit reversed a district court ruling holding six of Sprint’s patents invalid as indefinite. The definiteness dispute centered on the term “processing system,” which performed the function of transforming and routing telephone signals through a data network. Cox argued that “processing system” is a structural […]

District of New Jersey Finds the Claim Term “Homogeneous Matrix” Definite

Posted at 15:33h February 17, 2016 in Indefiniteness, Infringement by Carlson Caspers
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U.S. District Judge Renee Marie Bumb recently found two of three patents covering the epilepsy drug Oxtellar XR® to be valid and infringed.  Supernus Pharms. Inc. v. Actavis Inc. et al., Civ. No. 13-cv-4740 (D. N.J. Feb. 5, 2016).  As part of her opinion following a bench trial, Judge Bumb ruled that the term “homogeneous […]

District of Delaware Finds Terms of Namenda XR® Patents Indefinite During Claim Construction

Posted at 18:42h January 15, 2016 in ANDA Litigation, Claim Construction, Indefiniteness, Invalidity by Carlson Caspers
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On January 5, 2016, Chief Judge Leonard P. Stark of the District of Delaware found the claim language of several patents covering Namenda XR®—Forest Laboratories, Inc.’s extended-release drug for treating Alzheimer’s-type dementia—indefinite. Forest Labs., Inc. et. al v. Teva Pharm. USA, Inc. et al., Civ. No. 14-cv-00121-LPS (D. Del. Jan. 5, 2016). Notably, the court […]

District Court Orders Defendant to Disclose Indefiniteness Arguments to PTAB in IPR

Posted at 15:34h December 22, 2014 in Indefiniteness, Inter partes review by Carlson Caspers
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The complex interactions between an Inter Partes Review (“IPR”) before the patent office and a patent infringement action in Federal District Court require a patent challenger to think strategically about the approach they take to challenge a patent. Judge James Donato’s recent holding in IpLearn-Focus, LLC v. Microsoft Corp. highlighted the effect that District Court […]