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…
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…
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…
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…
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…
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…