Recitation of Common Functional Groups for Genus Claims Fails Written Description Requirement

Anticipation, Claimed Priority Date, Invalidity, Section 112, Written description

In an opinion issued on March 6, 2023, the Federal Circuit affirmed the PTAB’s holding of unpatentability because the applications from which the patent claimed priority from lacked sufficient written description under 35 U.S.C. § 112. Regents of University of MN v. Gilead Sciences, Inc., No. 2021-2168 (March 6, 2021). Because the patent could not…

Federal Circuit Reverses Examiner’s Anticipation Rejection Based on Examiner’s Belief that Prior Art Structure Inherently Performed Claimed Function

Anticipation, Inherency, Inter partes review

The Federal Circuit recently reversed and remanded an Examiner’s rejection of a claim that involved an element requiring both structural and functional limitations.  See In re Chudik, No. 2016-1487 (Fed. Cir. Jan. 9, 2017).  Specifically, the Federal Circuit reversed the Examiner’s rejection because the record failed to establish that a single prior art reference contained…

Federal Circuit Affirms Invalidity of OxyContin® Patents[1] : The Tamper-Resistance Patent

Anticipation, Appeal, Inherency, Tamper-resistance

On Monday, the Federal Circuit affirmed a decision from the Southern District of New York that four patents listed in the Orange Book for OxyContin® are invalid as anticipated and obvious in Purdue Pharma, L.P. v. Teva Pharmaceuticals USA, Inc.  This post addresses the second half of that decision, which was directed to a patent…