Patent Owner’s Statements in IPR May Constitute a “Disclaimer” of Claim Scope in Litigation

Author: Sean D. Damon
Editor: Jeff T. Watson

In Aylus Networks, Inc. v. Apple Inc., No. 16-1599 (Fed. Cir. May 11, 2017), the Federal Circuit held that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be relied upon to support a finding of prosecution disclaimer and affirmed the district court’s grant of SJ of noninfringement to Apple. Continue reading

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Spotlight on Upcoming Oral Arguments – May 2017

Spotlight on Upcoming Oral Arguments – February 2017

Authors: Caitlin O’Connell
Editor: Lily Robinson

Monday, May 1, 2017

Intervet v. E.I. DuPont de Nemours, No. 16-2131, Courtroom 402

In this appeal, the Federal Circuit has been asked to determine whether the AIA eliminated district court review of post-AIA interference decisions, and if so, whether the Court should review interference decisions de novo.  Intervet argues that the Court should overrule its Biogen v. Japanese Found. for Cancer Research decision and find that district court review is still available.  Alternatively, Intervet argues that the Court should overrule its Merck & Cie v. Gnosis decision and find that the Federal Circuit should review the Board’s determination of priority de novo.  DuPont argues that the Court’s decisions in Biogen and Gnosis were correctly decided, should not be disturbed, and cannot be revisited absent en banc review.
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Different Burdens of Proof and Different Records Allowed Different Conclusions on Validity by the PTAB and District Court

Author: Paula E. Miller  
Editor: Jeff T. Watson

In Novartis AG v. Noven Pharmaceuticals Inc., Nos. 16-1678, -1679 (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed the PTAB’s decisions finding obvious certain patents that were previously found nonobvious in district court.

Noven filed IPR petitions relating to patents directed to a pharmaceutical composition for the treatment of Alzheimer’s disease. Although prior district court decisions found certain claims of those patents nonobvious, the PTAB held that those claims would have been obvious.  Novartis appealed, alleging that the PTAB improperly reached a different conclusion than the district court and Federal Circuit in prior litigations. Continue reading

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