Stick to the Fax: Conflicting Statements Made During Prosecution Lead to Indefiniteness | McDermott Will & Emery jdsupra.com - get the latest breaking news, showbiz & celebrity photos, sport news & rumours, viral videos and top stories from jdsupra.com Daily Mail and Mail on Sunday newspapers.
Thursday, February 18, 2021
In deciding whether use of the term “passive link” to define a connection between a computer terminal and a fax machine rendered a patent claim indefinite, the US Court of Appeals for the Federal Circuit affirmed the district court’s finding of invalidity based on conflicting statements made by the patent owner during prosecution.
Infinity Computer Products, Inc. v. Oki Data Americas, Inc., Case No. 20-1189 (Fed. Cir. Feb. 10, 2021) (Prost, C.J.)
Infinity owns a patent directed to providing a circuit for interfacing a personal computer with a facsimile machine to enable the facsimile to be used as a scanner or a printer for a personal computer. The patent seeks to accomplish all of the objectives of a scanner or a printer in a simple, straightforward manner through the use of a circuit of highly simplified design and low cost. The patent claims recite that this functionality is accomplished “through a bi-directional direct connection
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On October 2, 2020, the Federal Circuit issued a precedential opinion vacating a district court’s judgment as a matter of law and reinstating a jury verdict finding of induced infringement of a patented use that had been carved out of a generic applicant’s label.
GlaxoSmithKline LLC v. Teva Pharms. USA, Inc., 976 F.3d 1347 (Fed. Cir. 2020). We previously analyzed this opinion and its impact in
At issue in the case is whether Teva’s marketing of carvedilol first with a skinny label, and later an amended label including the carved out indication as required by FDA, induced infringement of GSK’s reissue patent, RE40,000 (“the ’000 patent”).
The Federal Circuit’s October 2020 split decision in
GSK v. Teva[i] made waves throughout the pharmaceutical industry and among Hatch-Waxman litigators. In the broadest reading, some see the majority opinion as rendering any manufacturer of a marketed “AB‑rated” generic drug liable for induced infringement of patents covering any of the brand products’ FDA‑approved indications – even where the generic’s labeling “carved out” such an indication to escape infringement under the “section viii” provision of Hatch-Waxman.[ii]
GSK v. Teva is now headed to a Federal Circuit panel rehearing (not
en banc review) on February 23, and the industry and practitioners are watching closely. But recent developments suggest that the Federal Circuit might now avoid the hotly-debated legal question of whether a generic with a fully “carved-out” indication might induce infringement solely by touting its “AB-rating.” Rather, there are signs that the majority mi
On January 13, we originally posted on this topic. An update was posted on February 5. This post provides the most recent update on this matter. Yesterday, the Federal Circuit.