Posts Tagged: "Federal Circuit Review"

Litigants May Not Use a DJ to Obtain Piecemeal Adjudication

The Federal circuit heard the case on AbbVie Inc. v. MedImmune Ltd. AbbVie and MedImmune entered a development and licensing agreement in 1995. The agreement stemmed from a research collaboration between the parties, resulting in the antibody adalimumab, the active ingredient in Humira… In general, parties may not seek a declaratory judgment to litigate one issue in a dispute that must await adjudication of other issues for complete resolution of the dispute. In limited circumstances, courts may permit this type of action where litigation is pending that would resolve the remaining questions.

Board Improperly Interpreted Incorporation by Reference

While the Court affirmed several of the Board’s validity findings, it reversed the determination that the ’455 PCT qualifies as prior art. At issue was the extent to which the ‘817 application included the disclosures of Severinsky, so that challenged claims would antedate the ‘455 PCT. Paice argued that Severinsky was incorporated into the ‘817 application and was not prior art. Therefore, certain challenged claims could rely on Severinsky for the ‘817 priority date, which was earlier than the ’455 PCT.

Disclaimer Before Institution of IPR Results In Adverse Judgment And Estoppel

A disclaimer of challenged patent claims before an IPR is instituted may result in a final adverse judgment against the patent owner, triggering estoppel provisions that preclude the assertion of other claims that are not patentably distinct from those disclaimed… Judge Newman dissented, explaining that because no trial occurred, the Board had no authority to issue an adverse judgment.

Patent Cannot Retroactively Be Filed As Divisional Application to Avoid Obviousness-Type Double Patenting

To fall within the safe-harbor protection against obviousness-type double patenting, a patent application must be properly designated as a divisional application before the patent issues. Attempts to retroactively re-designation a CIP application as a divisional does not bring the patent granted from that application within the protection of the safe-harbor, whether or not any benefit was gained from the initial CIP designation.

Federal Circuit Reverses and Remands Board Decision Upholding Patentability

In an appeal from an IPR in which the Board upheld the patentability of several patent claims, the Federal Circuit vacated the decision and remanded to the Board with instructions to consider the patentability of certain dependent claims… The patentability of independent Claims 1 and 17 was the sole basis for the Board’s decision in this appeal from the ’592 IPR; the Board did not separately address the dependent challenged claims. The holding of unpatentability of claims 1 and 17 in the ’728 IPR, and the affirmance by the Federal Circuit, abrogated the basis for the Board’s decision that the claims in the ’592 IPR were patentable.