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.
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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Patent Law Principles Apply to Claim Scope: Orange Book Delisting and Listing and Regulations
By Benjamin Ediger, Ph.D. on Mar 9, 2023
Posted In Patents
The US Court of Appeals for the Federal Circuit ordered that the only Orange Book patent asserted in a lawsuit must be delisted since its claims were directed to the computer-implemented distribution system and not a method of use. Jazz Pharms., Inc. v. Avadel CNS Pharms., LLC, Case No. 23-1186 (Fed. Cir. Feb. 24, 2023)...
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All the Benefits of a Reverse Triangular Merger, None of the IP Merger Mess
By Benjamin Ediger, Ph.D. on Mar 2, 2023
Posted In Uncategorized
The US Court of Appeals for the Eleventh Circuit affirmed a district court’s summary judgment dismissal of plaintiff’s claim that the defendant failed to provide a payment conditioned on the sale, merger or transfer of certain intellectual property since ownership was not transferred via the merger. GSE Consulting, Inc. v. L3Harris Techs., Inc., Case No....
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Things May Be Bigger in Texas, but Not Necessarily More Convenient
By Benjamin Ediger, Ph.D. on Feb 16, 2023
Posted In Patents
The US Court of Appeals for the Federal Circuit granted a mandamus petition after analyzing the Fifth Circuit’s public and private interest factors for transfer motions and ordered the US District Court for the Western District of Texas to transfer a case to the petitioner’s venue. In re Google LLC, Case No. 23-101 (Fed. Cir....
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Challenging Inventorship on Summary Judgment? Put a Cap on It
By Benjamin Ediger, Ph.D. on Jan 5, 2023
Posted In Patents
The US Court of Appeals for the Federal Circuit, citing a dispute as to material facts, held that a factfinder could reasonably conclude that an alleged joint inventor failed to sufficiently contribute to inventing the claimed technologies and thus reversed a district court order granting summary judgment of invalidity based on failure to join an...
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