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…the test for indefiniteness does not depend on a potential infringer's ability to ascertain the nature of its own accused product to determine infringe- ment, but instead on whether the claim delineates to a skilled artisan the bounds of the invention.
at p. 1340
⚠ not in text
cited 2× by 2 distinct cases, 2018–2022 ·
…the test for indefiniteness does not depend on a potential infringer's ability to ascertain the nature of its own accused product to determine infringement, but instead on whether the claim delineates to a skilled artisan the bounds of the invention.
at p. 1340
⚠ not in text
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Top citers, strongest first. 50 distinct citers.
How cited ↗
examined
Cited as authority (verbatim quote)
Ironburg Inventions Ltd. v. Valve Corporation
the test for indefiniteness does not depend on a potential infringer's ability to ascertain the nature of its own accused product to determine infringe- ment, but instead on whether the claim delineates to a skilled artisan the bounds of the invention.
examined
Cited as authority (verbatim quote)
Ironburg Inventions Ltd. v. Valve Corporation
the test for indefiniteness does not depend on a potential infringer's ability to ascertain the nature of its own accused product to determine infringe- ment, but instead on whether the claim delineates to a skilled artisan the bounds of the invention.
examined
Cited as authority (verbatim quote)
Ignite USA, LLC v. Pacific Market International LLC
the test for indefiniteness does not depend on a potential infringer's ability to ascertain the nature of its own accused product to determine infringement, but instead on whether the claim delineates to a skilled artisan the bounds of the invention.
examined
Cited as authority (verbatim quote)
Novo Nordisk Pharmaceuticals, Inc. v. Bio-Technology General Corp.
(3×)
also: Cited as authority (rule)
thus, whether it was actually possible to make pure pch anhydrate before the critical date of the '723 patent is irrelevant. the '196 patent suffices as an anticipatory prior art reference if it discloses in an enabling manner the production of phc hemihydrate.
examined
Cited as authority (quoted)
Barrette Outdoor Living, Inc. v. Fortress Iron, Lp
the test for indefiniteness does not depend on a potential infringer's ability to ascertain the nature of its own accused product to determine infringement, but in- stead on whether the claim delineates to a skilled artisan the bounds of the invention.
examined
Cited as authority (quoted)
Harper v. United States
daubert requires a binary choice - admit or exclude - and a judge in a bench trial should have discretion to admit questionable technical evidence, though of course he must not give it more weight than it deserves.
examined
Cited as authority (quoted)
Pipp Mobile Storage Systems, Inc. v. Innovative Growers Equipment, Inc.
the test for indefiniteness does not depend on a potential infringer's ability to ascertain the nature of its own accused product to determine infringement, but instead on whether the claim delineates to a skilled artisan the bounds of the invention.
examined
Cited as authority (quoted)
01 Communique Laboratory, Inc v. Citrix Online, LLC
because apotex seeks to practice the prior art, and because that practice infringes, the next logical inquiry involves anticipation. that is, if the prior art infringes now, logically the prior art should have anticipated the claim before the filing of the ... patent.
discussed
Cited as authority (quoted)
Smith & Nephew, Inc. v. Arthrex, Inc.
(2×)
also: Cited as authority (rule)
once the nail has seated tightly, it can be driven in....
cited
Cited as authority (rule)
ACERTA PHARMA B.V., et al. v. CIPLA LIMITED, et al.; ACERTA PHARMA B.V., et al. v. MSN PHARMACEUTICALS, INC., et al.
A wide range of XRPD and 26 values does not, by itself, render a claim indefinite, because “[b]readth is not indefiniteness.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.
cited
Cited as authority (rule)
Focus Products Group International, LLC v. Kartri Sales Co., Inc.
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1337 (Fed.
examined
Cited as authority (rule)
Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc.
(4×)
also: Cited "see"
“Moreover, a prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily pre- sent, or inherent, in the single anticipating reference.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (Fed.
discussed
Cited as authority (rule)
Novartis Pharmaceuticals Corporation v. Torrent Pharma Inc.
“Claim interpretation requires the court to ascertain the meaning of the claim to one of ordinary skill in the art at the time of invention.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1338 (Fed.
cited
Cited as authority (rule)
Shunock v. Apple, Inc.
While the term may be broad, “breadth is not indefiniteness.” BASF Corp., 875 F.3d at 1367 (quoting Smithkline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.
discussed
Cited as authority (rule)
Exeltis USA, Inc. v. Lupin Ltd.
(2×)
also: Cited "see"
Cir. 2017) (quoting SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.
discussed
Cited as authority (rule)
BioNTech SE v. CureVac SE
(2×)
also: Cited "see"
Thus, in the context of the broader patent family, it is evident that not all “original” nucleic acid sequences are “wild type” sequences.8 8 Claim construction is “a contextual interpretation of language” and “not a policy- driven inquiry.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1339 (Fed.
cited
Cited as authority (rule)
Corrigent Corporation v. Dell Technologies Inc.
Cir. 2017) (quoting SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.
cited
Cited as authority (rule)
Pioneer Hi-Bred International Inc. v. Syngenta Seeds, LLC
Cir. 2017) (quoting SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.
discussed
Cited as authority (rule)
Novartis Pharmaceuticals Corporation v. MSN Pharmaceuticals Inc.
For example, as Novartis argues (D.I. 70 at 6-7), MSN’s ANDA products may contain an amount of infringing material sufficient to raise an infringement theory under SmithKline Beecham Corp. v. Apotex Corp, 403 F.3d 1331, 1341 (Fed.
cited
Cited as authority (rule)
Allergan, Inc. v. Revance Therapeutics, Inc.
Cir. 2017) (quoting SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.
cited
Cited as authority (rule)
Genzyme Corporation v. Novartis Gene Therapies, Inc.
As noted in section II, supra p. 4, “breadth is not indefiniteness.” BASF, 875 F.3d at 1367 (quoting SmithKline, 403 F.3d at 1341).
cited
Cited as authority (rule)
Conformis, Inc. v. DePuy Synthes, Inc.
Cir. 2017) (quoting SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.
discussed
Cited as authority (rule)
Baxter Healthcare Corporation v. Nevakar Injectables Inc.
But as will be set out below, the remaining intrinsic evidence does not suggest this at all. 9 Nevakar responds to this point in part by arguing that Baxter’s position (i.e., that the phrase “further comprises” means that the “norepinephrine or a salt thereof” must be a separate chemical compound distinct from the “chelating agent”) is an “improper and premature attempt[] to argue noninfringement under the guise of claim construction[.]” (D.I. 67 at 22 (citing SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1339-40 (Fed.
discussed
Cited as authority (rule)
Science Applications International Corp. v. United States
Cir. 2017) (“But the inference of indefiniteness simply from the scope finding is legally incorrect: ‘breadth is not indefiniteness.’” (quoting SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.
discussed
Cited as authority (rule)
Neodron Ltd. v. Texas Instruments Inc.
The Federal Circuit held that “the inference of indefiniteness simply from the scope finding is legally incorrect: ‘breadth is not indefiniteness.’” Id. (quoting SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.
discussed
Cited as authority (rule)
Terves LLC v. Yueyang Aerospace New Materials Co. Ltd.
(2×)
also: Cited "see"
“Breadth is not indefiniteness.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.
discussed
Cited as authority (rule)
Bright Data Ltd. v. code200, UAB
The Federal Circuit held that “the inference of indefiniteness simply from the scope finding is legally incorrect: ‘breadth is not indefiniteness.’” Id. (quoting SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.
discussed
Cited as authority (rule)
Galderma Laboratories v. Teva Pharmaceuticals USA
(2×)
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1337 (Fed.
cited
Cited as authority (rule)
Virnetx Inc. v. the Mangrove Partners
It “is not a policy-driven inquiry.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1339 (Fed.
cited
Cited as authority (rule)
Basf Corporation v. Johnson Matthey Inc.
But.the inference of indefiniteness simply from the- scope finding is legally incorrect: “breadth is not indefiniteness.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.
discussed
Cited as authority (rule)
G3 Genuine Guide Gear Inc. v. Marker Deutschland GmbH
A prior art reference may also anticipate without disclosing a feature of the claimed invention if the characteristic at issue is “necessarily present, or inherent, in the single anticipating reference.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (Fed.
discussed
Cited as authority (rule)
Kahr v. Cole
Cir. 2003). “[A] prior art reference may anticipate without disclosing a feature of the claimed invention if that missing feature is necessarily present, or inherent, in the single anticipating reference.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (Fed.
discussed
Cited as authority (rule)
Eli Lilly & Co. v. Perrigo Co.
Even if a reference does not explicitly disclose a feature of the claimed invention, a prior art reference may still be deemed to anticipate “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” SmithKline Beecham Corp. v. Apotex Corp,, 403 F.3d 1331, 1343 (Fed.Cir.2005) (citing Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed.Cir.1991)).
cited
Cited as authority (rule)
Cumberland Pharmaceuticals, Inc. v. Mylan Institutional LLC
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (2005).
cited
Cited as authority (rule)
U.S. Water Services, Inc. v. Novozymes A/S
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (Fed.Cir.2005).
cited
Cited as authority (rule)
GPNE Corp. v. Apple Inc.
Corp., 587 F.3d 1339, 1352 (Fed.Cir.2009); SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.Cir.2005) (“[B]readth is not indefiniteness.” (quotation and citation omitted)).
examined
Cited as authority (rule)
Procter & Gamble Co. v. Team Technologies, Inc.
(4×)
also: Cited "see, e.g."
SmithKline, 403 F.3d at 1341.
cited
Cited as authority (rule)
Janssen Products, L.P. v. Lupin Ltd.
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1346 (Fed.Cir.2005).
cited
Cited as authority (rule)
Allergan, Inc. v. Apotex Inc.
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1344 (Fed.
cited
Cited as authority (rule)
Emblaze Ltd. v. Apple Inc.
Medtronic Vascular Inc. v. Abbott Cardiovascular Sys., Inc., 614 F.Supp.2d 1006, 1014 (N.D.Cal.2009) (citing SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1342 (Fed.Cir.2005)). .
cited
Cited as authority (rule)
Dey, L.P. v. Teva Parenteral Medicines, Inc.
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (2005). 2.
discussed
Cited as authority (rule)
MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc.
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1340-41 (Fed.Cir.2005) ("The test for indefiniteness does not depend on a potential infringer’s ability to ascertain the nature of its own accused product to determine infringement, but instead on whether the claim delineates to a skilled artisan the bounds of the invention.”).
discussed
Cited as authority (rule)
Biosig Instruments, Inc. v. Nautilus, Inc.
(2×)
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1340-41 (Fed.Cir.2005).
discussed
Cited as authority (rule)
B-K Lighting, Inc. v. Vision3 Lighting
Although anticipation is a question of fact, where there are no “genuine factual disputes underlying the anticipation inquiry, the issue is ripe for judgment as a matter of law.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (Fed.Cir.2005), cert. denied, 547 U.S. 1218 , 126 S.Ct. 2887 , 165 L.Ed.2d 938 (2006).
discussed
Cited as authority (rule)
Apple, Inc. v. Samsung Electronics Co.
Reynolds Tobacco Co., 537 F.3d 1357, 1373 (Fed.Cir.2008) (quoting Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed.Cir.2005) (quoting SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.Cir.2005))).
discussed
Cited as authority (rule)
Jacobs Vehicle Equipment Co. v. Pacific Diesel Brake Co.
Prior art “must be sufficient to enable one with ordinary skill in the art to practice the invention.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1342 (Fed.Cir.2005) (quoting Minn. Mining & Mfg.
cited
Cited as authority (rule)
Only the First, Ltd. v. Seiko Epson Corp.
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (2005).
discussed
Cited as authority (rule)
Meadwestvaco Corp. v. Rexam Plc
Indefiniteness “does not depend on a potential infringer’s ability to ascertain the nature of its own accused product to determine infringement, but instead on whether the claim delineates to a skilled artisan the bounds of the invention.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1340-41 (Fed.Cir.2005).
cited
Cited as authority (rule)
Volterra Semiconductor Corp. v. Primarion, Inc.
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (Fed.Cir.2005).
cited
Cited as authority (rule)
Wellman, Inc. v. Eastman Chemical Co.
“The review of indefiniteness under 35 U.S.C. § 112 , paragraph 2, proceeds as a question of law without deference.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1338 (Fed.Cir.2005).
Retrieving the full opinion text from the archive…
Smithkline Beecham Corp.
v.
Apotex Corp.
v.
Apotex Corp.
2003-1285.
Court of Appeals for the Federal Circuit.
Apr 12, 2005.
403 F.3d 1331
Published
United States Court of Appeals for the Federal Circuit
ERRATA
April 12, 2005
Appeal No. 03-1285,-1313 Smithkline Beecham v Apotex Corp., Majority Precedential Opinion
Decided: April 8, 2005
In the majority opinion, page 4, third line from the bottom:
Delete the word “anhydrate” and insert in its place “hemihydrate”