Qualcomm v. Apple – Pyrrhic Victory for Qualcomm?

So far, it’s been a slow year for jurisprudence in the life sciences, so I thought I would take a look at the somewhat quirky decision in Qualcomm, Inc. v. Apple, Inc., Appeal nos. 2020-1558, -1559 (Fed. Cir., February 1, 2022). I won’t pretend to understand the technology in question which involves integrated circuit devices with power detection circuits for systems with multiple supply voltages. Some of the claims in Qualcomm’s patent (U.S. Pat. No. 8,063,674) had been found obvious by the Board in an IPR proceeding, based on a combination of “applicant admitted prior art” (AAPA) that was in the patent itself and a prior art patent application that was also discussed in the ‘674 patent, Majcherczak, (2002/063364). It was conceded that all the elements of the claims in question were disclosed in these two documents, and the Board treated them as “prior art consisting of patents and printed publications” and granted Apple’s petition for IPR, then found the claims obvious.

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Novartis v. Accord – No Limits on Negative Limitations?

A split panel of Judges O’Malley, Linn and Moore (dissenting) affirmed a district court ruling that the claims of U.S. Pat. No. 9,187,405 met the written description requirement (WDR) of s. 112(a). Novartis Pharmaceuticals v. Accord Healthcare Inc., Appeal No. 2021-1070 (Fed. Cir., Jan. 3, 2022). Claim 1 reads as follows:

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Biogen v. Mylan – Therapeutic v. Clinical Efficacy – What is Required by the Written Description Requirement?

In Biogen v. Mylan, Appeal No. 2020-1933 (Fed. Cir., November 30, 2021), a divided panel of Judges O’Malley, Reyna and Hughes affirmed a district court’s ruling that Biogen’s U.S. Pat. No. 8,399,514 is invalid for failing to meet the written description requirement [WDR] of s. 112(a).  Judges Reyna and Hughes were the majority, while Judge O’Malley penned an 11-page dissent.

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Indivior v. Dr. Reddy’s Laboratory – Homeless on the Range

In Indivior v. Dr. Reddy’s Laboratory (“DRL”), Appeal  nos. 2020-2073, -2142 (Fed. Cir., November 24, 2021) a split panel (Lourie [writing] and Dyk, with Linn concurring in part and dissenting in part) affirmed a Board decision that claims 1-5 and 7-14 were invalid. Indivior had issued these claims in U. S. Pt. No. 9,687,454 out of one of a long chain of continuations. However, it had added two ranges to the claims directed to an “oral, self-supporting, mucoadhesive film”. One “new claim” (1) added the element that the film comprised “about 40 wt % to about 60 wt % of a water soluble polymeric matrix.” The other claims in suit added the element that the film comprises about 48.2 wt % to about 58.6 wt % of the water soluble polymeric matrix.

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