Utility Patent Cases
Coverage since November 3, 1994

Utility Patent

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University of Rochester v. G.D. Searle & Co. — Method Patent Claims Fail Written Description When Claimed Compounds Were Not Invented

The Federal Circuit affirmed invalidation of the University of Rochester’s COX-2 inhibitor method patent, holding that a patent claiming a method of using a compound fails the written description requirement when the specification does not disclose the actual compounds needed to perform the me

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Liquid Dynamics Corp. v. Vaughan Co. — Terms of Approximation Like ‘Substantial’ in Patent Claims Have Real Meaning and Cannot Be Interpreted to Require Perfection

The Federal Circuit vacated a summary judgment of non-infringement, holding that the claim term ‘a substantial helical flow path’ is a meaningful approximation — not an absolute requirement for a geometrically perfect helix — and that the district court erred by construing the term to re

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Geneva Pharmaceuticals v. GlaxoSmithKline — Method-of-Use Claims Cannot Extend Patent Protection When Earlier Compound Patent Discloses the Same Use

The Federal Circuit held that method-of-use claims on a pharmaceutical compound are not patentably distinct from an earlier patent claiming the same compound when the earlier patent’s specification already disclosed that use, affirming invalidity for nonstatutory obviousness-type double patent

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CFMT, Inc. v. YieldUp International Corp. — Enablement Standard Requires Only That Skilled Artisan Can Make and Use Invention, Not That Invention Meet Commercial Performance Thresholds

The Federal Circuit reversed summary judgments of invalidity for lack of enablement and unenforceability for inequitable conduct in a semiconductor wafer-cleaning patent case, holding that enablement requires only that skilled artisans be able to make and use the full scope of the claimed invention

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Schering Corp. v. Geneva Pharmaceuticals — Metabolite of Patented Drug Inherently Anticipated by Prior Art, Cannot Be Separately Patented

The Federal Circuit held that Schering’s patent on a metabolite of Claritin (loratadine) was invalid because the metabolite is necessarily and inherently formed when a patient takes a dose of the previously patented loratadine — establishing that inherent anticipation does not require recognit

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