September 3, 2020
Authored and Edited by Kenneth S. Guerra; Samhitha Muralidhar Medatia; Elizabeth D. Ferrill
In Baxalta Inc. v. Genentech, Inc., No. 2019-1527 (Fed. Cir. Aug. 27, 2020), the Federal Circuit vacated antibody-related claim constructions, holding the district court erred by not considering the patent as a whole.
Baxalta, a unit of Takeda, sued Genentech alleging the blockbuster hemophilia treatment Hemlibra (emicizumab-kxwh) infringed U.S. Patent No. 7,033,590. The District of Delaware construed “antibody” to be limited to molecules with identical heavy chains and identical light chains, finding the specification defined the term, and “antibody fragment” to be limited to antibodies lacking a constant region and excluding bispecific antibodies, finding the prosecution history disclaimed a broader construction. Based on these constructions, the parties entered a stipulation of noninfringement. Baxalta appealed.
The Federal Circuit vacated the constructions and the stipulation of noninfringement. First, the Court took issue with the narrow constructions as they would render the asserted dependent claims invalid. Second, the Court found implausible that by mistake, the specification disclosed antibodies and techniques for preparing antibodies falling outside the narrow construction. Third, the Court rejected the district court’s application of prosecution history disclaimer, finding no clear disavowal language in the prosecution history. Because the stipulation of noninfringement was based on erroneous claim construction, the Court vacated and remanded.
claim construction, estoppel, prosecution history estoppel, antibodies, District of Delaware, United States Court of Appeals for the Federal Circuit (CAFC)
Copyright © 2020 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
June 10-12, 2024
San Francisco
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
10th Annual Georgia Asian Pacific American Bar Association Gala
May 29, 2024
Atlanta
Workshop
Life Sciences Workshop: Updates and Key Trends in Pharmaceutical and Biotechnology IP Law
May 2, 2024
Cambridge
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.