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SmithKline Beecham Corp. v. Apotex Corp. — Product-by-Process Patent Claims Are Anticipated If the Product Itself Was Previously Known, Regardless of Process

The Federal Circuit affirmed invalidity of SmithKline’s Paxil patent, holding that product-by-process claims are anticipated by prior art that discloses the same product, even when the prior art used a different process to make it — because patents protect products, not processes, under such c

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Ferring B.V. v. Barr Laboratories — Concealed Declarant Affiliations Constitute Inequitable Conduct When Examiner Has Specifically Requested Independent Evidence

The Federal Circuit affirmed patent unenforceability for inequitable conduct, holding that pharmaceutical patent applicants who submitted declarations from scientists with undisclosed financial ties to the patent owner engaged in deceptive conduct that was material because the patent examiner had sp

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Digital Control Inc. v. Charles Machine Works — Multiple Materiality Standards Coexist for Inequitable Conduct; False Rule 131 Declarations Are Inherently Material

The Federal Circuit vacated and remanded in a horizontal directional drilling patent case, holding that the 1992 PTO Rule 56 materiality standard supplements rather than replaces the earlier ‘reasonable examiner’ standard, that false statements in a Rule 131 declaration are inherently ma

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LizardTech, Inc. v. Earth Resource Mapping, Inc. — Written Description Requirement Invalidates Claims Broader Than Disclosed Embodiment

The Federal Circuit held that patent claims covering all methods of achieving a technical result are invalid for insufficient written description when the specification discloses only one specific method, warning inventors that the scope of claims must be commensurate with what was actually disclose

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In re Fisher — Expressed Sequence Tags Lack Patentable Utility Without Identification of the Functions of the Underlying Genes

The Federal Circuit affirmed rejection of patent claims covering expressed sequence tags (ESTs) — partial gene sequences — for lack of utility under § 101, holding that ESTs that serve only as research tools without identification of the functions of their corresponding genes do not have the specifi

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