Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistColumns & DepartmentsIntellectual PropertyLitigationPatent Litigation

IP News

By Jeff Ginsberg and Zhiqiang Liu
May 01, 2023

Federal Circuit Affirms the Board's Finding of Anticipation Because Prior Art Patent and References Incorporated Therein Inherently Meet the Disputed Claim Limitations

On April 11, 2023, a Federal Circuit panel consisting of Judges Reyna, Schall, and Chen issued a unanimous opinion, authored by Judge Reyna, in Arbutus Biopharma Corp. v. ModernaTx, Inc., Case No. 2020-1183. Patent Owner Arbutus appealed from the Patent Trial and Appeal Board's final written decision in an inter partes review (IPR) proceeding that found all claims invalid as anticipated. Because a prior art patent, including references incorporated therein, inherently discloses the disputed claim limitations, the panel affirmed the decision.

The patent at issue is directed to compositions comprising stable nucleic acid-lipid particles ("SNALP") that have a non-lamellar morphology. Slip Op. at 2-3. Whether SNALP particles adopt a lamellar or non-lamellar morphology depends on both the lipids used for making the formulations, and the process used for forming SNALP particles. Id. The patent identifies five formulations (i.e., formulations using conjugated lipid and cationic lipid in molar ratios of 1:62, 1:57, 2:40, 2:30, and 10:15) that can be prepared by either Stepwise Dilution Method ("SDM") or Direct Dilution Method ("DDM"). Id. at 3-4. The patent further incorporates by reference each of two published patent applications (the '031 and '025 publications) "in its entirety for all purposes," including for disclosing the SDM and DDM methods. Id. at 4.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Why So Many Great Lawyers Stink at Business Development and What Law Firms Are Doing About It Image

Why is it that those who are best skilled at advocating for others are ill-equipped at advocating for their own skills and what to do about it?

Bankruptcy Sales: Finding a Diamond In the Rough Image

There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.

The DOJ's Corporate Enforcement Policy: One Year Later Image

The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.

A Lawyer's System for Active Reading Image

Active reading comprises many daily tasks lawyers engage in, including highlighting, annotating, note taking, comparing and searching texts. It demands more than flipping or turning pages.

Protecting Innovation in the Cyber World from Patent Trolls Image

With trillions of dollars to keep watch over, the last thing we need is the distraction of costly litigation brought on by patent assertion entities (PAEs or "patent trolls"), companies that don't make any products but instead seek royalties by asserting their patents against those who do make products.