In Biogen Idec, Inc. v. GlaxoSmithKline LLC, the Federal Circuit upheld a narrow claim interpretation based on prosecution history disclaimer. The court held that the applicants’ arguments against an enablement rejection served to disclaim the broader claim scope sought in the infringement action. This case highlights the risk that any statement made during prosecution can be used to construe the scope of the claims.
In a complaint filed October 19, 2012, Biogen Idec MA Inc. joined patent holders such as Exelixis, Inc. and Human Genome Sciences, Inc., who are challenging the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(i)). As I wrote previously, I think these challenges may have merit, and patent holders facing similar PTA calculations may want to consider pursuing similar civil actions against the USPTO.Continue reading this entry