A Thin Gray Line: Reading Claims in Light of the Specification Versus Impermissibly Reading Limitations into the Claims

Claim Construction

There is a fine and often ambiguous line between improperly importing limitations from the specification into the claims and interpreting claims in light of the specification.  The Federal Circuit recently drew that line in The Medicines Company v. Mylan, Inc., reversing a lower court’s judgment that Plaintiff Mylan’s proposed bivalirudin formulation would infringe U.S. Patent…

Board Holds that Unexpected Results Overcome Claims that Were Prima Facie Obvious

IPR, Secondary Considerations, Unexpected Results

In Coalition for Affordable Drugs V LLC v. Biogen MA Inc., the PTAB denied an obviousness challenge of a patent covering methods of treating multiple sclerosis using a particular dosage of known fumarate drugs.  The patent at issue—U.S. Patent No. 8,399,514—is listed in the Orange Book for Biogen’s Tecfidera® product. The claims of the ’514…