IP Newsflash

The Supreme Court unanimously held that for a complaint of induced infringement, a patent owner must allege that the accused infringer took affirmative, not passive, steps to encourage direct infringement. Thus, where a generic drug has a skinny label, to induce infringement of the carved-out patented use of the drug, the generic company must have taken steps that were designed to cause others to perform the patented use, not just steps that could cause such conduct.

The Northern District of Illinois granted a summary judgment motion of no invalidity based on indefiniteness because the qualitative terms like “sufficiently slow” and “desired period of time” were definite when viewed in light of the surrounding claim language and specification.

In the April 1, 2026 edition of the Official Gazette, the U.S. Patent and Trademark Office announced a new procedural framework that permits patent owners to submit a limited, early response to a request for ex parte reexamination.

The Northern District of Illinois recently dismissed a complaint without prejudice for failing to plausibly allege patent infringement. The court found that the allegations of direct infringement were insufficiently pled where the images of the accused product included in the complaint did not appear to show a particular necessary element of the claims.

The District of New Jersey recently denied the litigants’ request for a briefing schedule to resolve a dispute about a proposed discovery confidentiality order, and also denied extending the deadlines for the defendants’ invalidity and non-infringement contentions. At issue was the scope of the FDA and patent prosecution bars in the confidentiality order.

The USPTO Director denied a patent owner’s request for discretionary denial of two inter partes review (IPR) petitions, citing the petitioner’s “well-settled expectation” that it would not be accused of infringing the two challenged patents. The Director’s conclusion was based on the petitioner’s decade-long business relationship with the original owner of the challenged patents.

The Southern District of Florida recently dismissed a complaint without prejudice because the allegations used a form of “shotgun pleading.” The court explained that a shotgun pleading includes those where every count incorporates every preceding paragraph into each cause of action, and that dismissal of such pleadings was required under Eleventh Circuit precedent.

The Federal Circuit recently addressed whether the PTO must conduct notice‑and‑comment rulemaking before issuing instructions that guide how the Board should exercise discretion at the institution stage of IPRs. The court held that no such rulemaking is required. Instructions to the Board regarding its use of the Director’s delegated discretionary authority not to institute review are merely general statements of policy exempt from notice-and-comment rulemaking.  

The District Court for the District of Delaware recently invalidated claims directed to a panoramic objective lens for lack of enablement, holding the claims impermissibly recited a single element in means‑plus‑function form. Under § 112, ¶ 6, “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function….” By its plain terms, the statute permits means‑plus‑function claiming only in the context of a “combination.” In other words, a claim may not consist solely of a single means‑plus‑function element. Claims drafted as a single means are invalid for lack of enablement as a matter of law.