May 22, 2017

Federal Circuit Court Decisions For Week Ending May 5, 2017

In re Affinity Labs of Texas, LLC, Case No. 2016-1173 (May 5, 2017) (Precedential) (3-0) Patent No. 7,440,772

Key points:

  • Dismissal without prejudice of counterclaims of invalidity in district court action is not a “final judgment” sufficient to terminate reexamination proceedings initiated by the counterclaimant at the USPTO.

In re Affinity Labs of Texas, LLC, Case Nos. 2016-1092, 2016-1172 (May 5, 2017) (Precedential) (3-0) Patent No. 7,324,833

Key points:

  • Where multiple reexamination proceedings are merged into a single proceeding, a final judgment finding patent claims valid in district court in an action against one of the parties requesting reexamination does not require the USPTO to terminate the merged reexamination proceeding under § 317(b).

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., Case Nos. 2016-1284, 2016-1787 (May 1, 2017) (Precedential) (3-0) Patent Nos. 7,947,724, 7,947,725, 7,960,424 and 8,598,219

Key points:

  • Lack of FDA approval does not prevent a sale from triggering the on-sale bar of 35 U.S.C. § 102, if an invention has been reduced to practice and works for its intended use.
  • Under the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale to trigger the on-sale bar.

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