This morning, the Federal Circuit released two precedential opinions, three nonprecedential opinions, one nonprecedential order, two summary affirmances, and one errata. Both precedential opinions come in patent cases. Of the nonprecedential opinions, two come in patent cases and the other comes in a government contract case. The lone nonprecedential order dismisses an appeal. Here are the introductions to the opinions and links to the summary affirmances, order, and errata.
In re Xencor, Inc. (Precedential)
Xencor, Inc. (“Xencor”) appeals a decision of the Appeals Review Panel (“ARP”) of the Patent Trial and Appeal Board (“Board”) rejecting the claims of its patent application as unpatentable for lack of written description. Specifically, Xencor contends that the Board and the ARP erred by construing part of one claim’s preamble as limiting and requiring written description for the Jepson claim preamble of another claim. The Director of the United States Patent and Trademark Office (“Director”) responds that the preamble should be read as a whole, with all parts limiting and requiring written description, and neither the specification nor Xencor’s extrinsic evidence established that the relevant Jepson claim limitation had sufficient written description.
We hold that the limiting preamble of a Jepson claim must be supported with sufficient written description, and what constitutes sufficiency varies depending on the knowledge of the pertinent person of ordinary skill in the art. A patentee has the burden of providing written description; in a Jepson claim, that burden extends to the limiting preamble. We additionally hold that substantial evidence supports the Board’s finding that Xencor failed to provide adequate written description for its Jepson claim and for its other claim, the preamble of which we agree with the Board and the ARP is limiting. Accordingly, we affirm.
Merck Sharp & Dohme B.V. v. Aurobindo Pharma USA, Inc. (Precedential)
This case concerns patent term extensions (“PTEs”) for reissued patents under the Hatch-Waxman Act. The Hatch-Waxman Act provides a process for extending patent terms by up to five years to compensate patent owners for time lost during the lengthy regulatory review of new drug applications. See 35 U.S.C. § 156. The formula for calculating PTE is set forth in subsection 156(c), which provides that “[t]he term of a patent . . . shall be extended by the time equal to the regulatory review period . . . occur[ring] after the date the patent is issued.” Id. § 156(c) (emphasis added). The sole issue on appeal is whether PTE for a reissued patent should be calculated based on the issue date of the original patent or the reissued patent; in other words, whether the reference to “the patent” in subsection 156(c) is to the original patent or the reissued patent. Using the issue date of the reissued patent would usually result in shorter PTE because review that occurs before the issue date does not affect PTE.
Here, the United States Patent and Trademark Office (“PTO”) granted an application for a five-year PTE for a reissued patent, U.S. Patent No. RE44,733 (the “RE’733 patent”), based on the issue date of the original patent, U.S. Patent No. 6,670,340 (the “’340 patent). We hold that, in the context of reissued patents, the reference to “the patent” in subsection 156(c) is to the original patent. Here, the ’340 patent included claims directed to the active ingredient for a drug product (and the RE’733 patent retained those same claims). Under these circumstances, the RE’733 patent was entitled to a five-year PTE based on the ’340 patent’s issue date, since regulatory review effectively prevented the patent owner from enforcing the patent during that period. We thus affirm the district court’s holding that the PTO correctly calculated the RE’733 patent’s PTE.
Balfour Beatty Construction, LLC v. Administrator of the General Services Administration (Nonprecedential)
Balfour Beatty Construction, LLC, appeals the decision of the Civilian Board of Contract Appeals that granted in part some of Balfour’s claims to recover increased costs allegedly incurred because of compensable delay, errors in the solicitation bridging documents, differing site conditions, and changes to the contract. Balfour contends that it is entitled to recover the increased costs associated with the claims the Board denied. Because we conclude the Board erred in its design defect analysis, we vacate the Board’s denial of the design defect claim with respect to the mat slab foundation and remand for further proceedings not inconsistent with this opinion.
Power Probe Group, Inc. v. Innova Electronics Corp. (Nonprecedential)
Innova Electronics Corporation (“Innova”) appeals from the decision of the United States District Court for the District of Nevada granting a preliminary injunction in favor of Power Probe Group, Inc. (“Power Probe”). Power Probe Grp., Inc. v. Innova Elecs., Corp., No. 21-cv-00332, 2023 WL 7043388 (D. Nev. Oct. 25, 2023) (“Preliminary Injunction Order”). Because we conclude that the district court did not abuse its discretion in granting the preliminary injunction, we affirm.
U.S. Well Services, LLC v. Stewart (Nonprecedential)
U.S. Well Services, LLC (“USWS”) appeals from the denials of its motions to amend in two final written decisions of the U.S. Patent Trial and Appeal Board (“the Board”). In the first decision, the Board found original claims 1–17 of U.S. Patent 10,280,724 (“the ’724 patent”) unpatentable and denied USWS’s motion to amend by adding proposed substitute claims 18–34. Halliburton Energy Servs., Inc. v. U.S. Well Servs., LLC, No. IPR2021-01316, 2023 WL 2597810 (P.T.A.B. Feb. 17, 2023) (“’1316 Decision”). In the second decision, the Board granted USWS’s request to cancel original claims 1–13 of U.S. Patent 10,254,732 (“the ’732 patent”) and denied USWS’s motion to amend by adding proposed substitute claims 14–26. Halliburton Energy Servs., Inc. v. U.S. Well Servs., LLC, No. IPR2022-00074 (P.T.A.B. Apr. 27, 2023) (“’0074 Decision”), Appeal No. 23-2106, J.A. 1–37. The Board held that the term “high pressure” in all proposed substitute claims was indefinite. We affirm.