Benjamin Ediger, Ph.D.
Subscribe to Benjamin Ediger, Ph.D.'s PostsBenjamin (Ben) Ediger, PhD focuses his practice on intellectual property transactions and patent counseling in the life sciences space, along with patent litigation and patent prosecution across a range of diverse technologies. Read Ben Ediger's full bio.
Detour Ahead: New Approach to Assessing Prior Art Rejections Under § 102(e)
By Benjamin Ediger, Ph.D. on Apr 3, 2025
Posted In America Invents Act, Patents
The US Court of Appeals for the Federal Circuit established a more demanding test for determining whether a published patent application claiming priority to a provisional application is considered prior art under pre-America Invents Act (AIA) 35 U.S.C. § 102(e) as of the provisional filing date, explaining that all portions of the published patent application...
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What Makes a Trademark Case “Exceptional” in the Fifth Circuit?
By Benjamin Ediger, Ph.D. on Jul 11, 2024
Posted In Trademarks
The US Court of Appeals for the Fifth Circuit affirmed a senior party mark but found that the district court committed clear error in finding that a similar junior party mark was valid. The Fifth Circuit also found that the district court abused its discretion in awarding attorneys’ fees to the senior user. Appliance Liquidation...
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New PTAB Claim Construction? Give the Parties Review Opportunity
By Benjamin Ediger, Ph.D. on Mar 28, 2024
Posted In Patents
The US Patent & Trademark Office (PTO) Director vacated Final Written Decisions issued by the Patent Trial & Appeal Board that presented a sua sponte construction of a claim term in dispute, holding that the parties were not provided adequate notice of the Board’s new construction. Assa Abloy AB v. CPC Patent Technologies Pty., Ltd.,...
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Carolina Calling: Sources of Proof Favor Transfer
By Benjamin Ediger, Ph.D. on Feb 8, 2024
Posted In Patents
The US Court of Appeals for the Federal Circuit vacated a district court order denying transfer, finding that the sources of proof, compulsory process and localized interest factors all favored transfer. In re Honeywell Int’l Inc., Case No. 23-152 (Fed. Cir. Jan. 26, 2024) (Dyk, Bryson, Taranto, JJ.) (per curiam) (nonprecedential) Lone Star SCM Systems...
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Wave Goodbye: Arguments Incorporated by Reference Are Waived
By Benjamin Ediger, Ph.D. on Nov 30, 2023
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s patentability determination, finding that the patent challenger waived an argument it attempted to incorporate by reference to another brief. Medtronic, Inc. v. Teleflex Life Scis. Ltd., Case No. 2022-1721 (Fed. Cir. Nov. 16, 2023) (Lourie, Prost, Chen, JJ.) Teleflex...
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Resorting to Extrinsic Evidence Is Necessary When Intrinsic Evidence Is Muddied
By Benjamin Ediger, Ph.D. on Nov 16, 2023
Posted In Patents
The US Court of Appeals for the Federal Circuit determined that the limitation “a pH of 13 or higher” could not be construed using the asserted patents’ intrinsic evidence and therefore remanded to the district court with instructions to consider the extrinsic evidence and its impact on claim construction. Actelion Pharms. Ltd v. Mylan Pharms....
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Go With the Flow: “A” Still Means “One or More”
By Benjamin Ediger, Ph.D. on Oct 26, 2023
Posted In Patents
The US Court of Appeals for the Federal Circuit reversed a claim construction that was adopted during an inter partes review (IPR) because the Patent Trial & Appeal Board erred in construing the contested limitation as limited to a single sample rather than including the possibility of plural samples. ABS Global, Inc. v. Cytonome/ST, LLC,...
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Don’t Ruin Today’s CNS with Yesterday’s Problems
By Benjamin Ediger, Ph.D. on Aug 10, 2023
Posted In Trademarks
The US Court of Appeals for the Fifth Circuit reversed a district court’s trademark invalidity finding based on lack of subject matter jurisdiction because a covenant not to sue (CNS) issued by the trademark owner precluded any reasonably expected future injury that the alleged infringer might incur. Nursery Decals & More, Inc. v. Neat Print,...
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Obviously Prima Facie Case Overcome by Secondary Considerations
By Benjamin Ediger, Ph.D. on Jun 15, 2023
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board, holding that the Board did not err in finding certain challenged claims nonobvious and not unpatentable based on a showing of several objective criteria of nonobviousness and a nexus of the evidence to a commercial product embodying the claimed...
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Actual or Potential Consumers in Related Goods Context Doesn’t Require PURE Overlap
By Benjamin Ediger, Ph.D. on Mar 23, 2023
Posted In Trademarks
The US Court of Appeals for the Federal Circuit reminded us that, in the context of related goods, the likelihood of confusion analysis does not require that actual or potential consumers of the goods be the same, but only that there be sufficient overlap. In re Oxiteno S.A. Industria e Comercio, Case No. 22-1213 (Fed....
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