IP Newsflash

In an ANDA litigation, the District of Delaware recently denied the defendants’ motion to compel the production of correspondence between the plaintiffs’ testifying expert and a third-party analyst who had performed experiments and provided data used by the testifying expert. The court found that the scope of material sought by the motion was overbroad and disproportionate to the needs of the case.

In an ANDA litigation, the District of Delaware recently denied the plaintiffs’ motion to strike portions of the defendants’ expert reports and related deposition testimony. Although the defendants’ invalidity contentions did not state the specific theories of invalidity upon which the expert opined, the court found that none of the Pennypack factors supported excluding that expert testimony.

The District of Delaware recently denied a defendant’s motion to dismiss plaintiff’s demand for enhanced damages based on willful infringement pursuant to 35 U.S.C. § 284, explaining that neither a demand for damages under § 284 nor an accusation of willful infringement amount to a claim for relief that can be subject to dismissal under Rule 12(b)(6).

District courts are split on whether a complaint can provide the required knowledge for post-suit indirect and willful infringement in that same lawsuit. Chief Judge Connolly in the District of Delaware recently confirmed that, consistent with his prior opinions, the complaint cannot serve as the basis for knowledge for either a claim of post-suit indirect infringement or a demand for willfulness-based enhanced damages in that lawsuit.

The Federal Circuit recently held that a patentee acted as its own lexicographer to define a claim term even though it did not explicitly define the term. Rather, because the patentee consistently and clearly used two terms interchangeably to describe the same structural feature and did so in all of the embodiments in which the feature appeared, the patentee impliedly gave the term its own, unique definition.

The Federal Circuit recently reversed a district court decision that found a patent that did not describe after-arising technology failed to satisfy the written description requirement. In so doing, the Federal Circuit explained that written description and enablement are evaluated based on the subject matter that is claimed, not the products that practice those claims. As a result, the patentee was not required to describe unclaimed, later-discovered features of the accused products despite the broad language in the claims that undisputedly covered the products.

On September 10, 2018, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) determining that there was no interference in fact between the University of California’s (“UC”) U.S. Patent Application No. 13/842,859 and multiple patents and applications owned by the Broad Institute, MIT and Harvard College (collectively “Broad Institute”) that claim technologies related to the CRISPR-Cas9 gene-editing technology.

In a Report and Recommendation issued December 7, 2017, Magistrate Judge Burke in the District of Delaware recommended that Amgen’s BPCIA complaint for infringement against Coherus Biosciences Inc. be dismissed with prejudice on the ground that prosecution history estoppel barred Amgen from bringing claims for infringement under the doctrine of equivalents.

In a final written decision, the Patent Trial and Appeal Board (PTAB) cancelled claims 1 and 2 of MiMedx’s U.S. Patent No. 8,372,437 directed to a product-by-process for producing placental tissue grafts. Claim 1, which is representative, recited (i) isolating intact amnion and chorion layers from placental tissue, (ii) washing the two layers, (iii) laminating the two layers together, and (iv) dehydrating the laminated graft.