Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
In re: Xencor, Inc., Appeal No. 2024-1870 (Fed. Cir. Mar. 13, 2025)
Our case of the week is an appeal from a decision of the Appeals Review Panel of the Patent Trial and Appeal Board, concerning Xencor’s patent application titled “Fc Variants with Altered Binding to FcRn.” The application, filed in 2020, asserts that “modifying antibodies with certain amino acid substitutions provides for longer staying power in the body and reduces the need for more frequent treatment.” The panel agreed with the board that the limiting preambles of the Jepson claims at issue were not supported by sufficient written description in the specification, and the Federal Circuit affirmed.
The Court first analyzed the method claim at issue and decided whether the phrases “treating a patient” and “administering” in the preamble were limiting. Xencor argued that different sections of a preamble may be considered independently, and only the sections the claims rely on or are necessary to give “life, meaning, and vitality” is limiting. The Court, however, found that the instant preamble “cannot be neatly packaged into two separate portions” because “treating a patient” was connected to “administering” with the word “by.”
ALSO THIS WEEK
Read more on each case via the button below.
Merck Sharp & Dohme BV et al. v. Aurobindo Pharma USA, Inc., Appeal No. 2023-2254 (Fed. Cir. March 13, 2025)
In an appeal from the United States District Court for the District of New Jersey, the Federal Circuit affirmed. The Court held that, at least for reissued patents where the original patent was directed to a drug product subject to FDA review, “the patent” in 35 U.S.C. § 156(c) used to determine the length of patent term extensions (“PTE”) refers to the original patent...
Regeneron Pharms., Inc. v. Amgen Inc., Appeal No. 2024-2351 (Fed. Cir. Mar. 14, 2025)
In an appeal from a district court’s denial of a motion for a preliminary injunction, the Federal Circuit affirmed. The district court found that Regeneron had not established a likelihood of success on its claim that Amgen had infringed a Regeneron patent that covered its EYLEA® biologic treatment for angiogenic eye disorders...
CQV Co., Ltd. V. Merck Patent GmbH, Appeal No. 2023-1027 (Fed. Cir. Mar. 10, 2025)
In an appeal from a final written decision regarding a post-grant review, the Federal Circuit remanded for further consideration of additional evidence related to potential prior art. The patent concerned alumina flakes used as luster in paints, printing ink, and other products. At issue was whether a particular batch of alumina flakes qualified as prior art—whether it had been on sale prior to the relevant priority date...
Sierra Wireless, ULC v. Sisvel S.P.A., Appeal Nos. 2023-1059, -1085, -1089, 1125 (Fed. Cir. Mar. 10, 2025)
In appeal from a final written decision of the Patent Trial and Appeal Board, the Federal Circuit vacated the Board’s finding that certain claims of Sisvel’s U.S. Patent No. 7,869,396 were unpatentable as obvious, and remanded for further consideration. The patent concerned data transmission methods to reduce data loss in wireless communication systems, and claimed method steps which included stopping a timer under certain conditions, and taking certain actions when the timer expired. At issue was whether these limitations were “conditional,” and whether the Board’s finding that one of those limitations was disclosed in the prior art was supported by substantial evidence....
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe
Jason A. Wrubleski, Shareholder
Contributors:
Tyler Hall, Shareholder
Brittani Gambrell, Associate
Jeff Liao, Associate