Mandy H. Kim
Subscribe to Mandy H. Kim's PostsMandy H. Kim focuses her practice on intellectual property litigation. Mandy has significant experience managing complex litigations across a wide range of technologies, including in the life sciences, biotechnology, medical devices, computer hardware and software, and consumer electronics industries. Mandy routinely handles motion practice, fact and expert discovery matters, and has litigated a number of cases from pleadings through trial and/or settlement. She has represented clients in federal and state courts, and before the International Trade Commission. Read Mandy H. Kim's full bio.
Heightened Written Description Standard for Negative Limitations?
By Mandy H. Kim on Jun 30, 2022
Posted In Patents
Addressing the issue of negative claim limitations, the US Court of Appeals for the Federal Circuit granted a petition for panel rehearing, vacated its prior decision (authored by now-retired Judge O’Malley) and reversed the district court’s finding that the patent was not invalid for inadequate written description. Novartis Pharms. v. Accord Healthcare Inc., Case No....
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Silence May Be Sufficient Written Description Disclosure for Negative Limitation
By Mandy H. Kim on Jan 13, 2022
Posted In Patents
Addressing the issue of written description in a Hatch-Waxman litigation, the US Court of Appeals for the Federal Circuit affirmed the district court’s finding that the patent adequately described the claimed daily dose and no-loading dose negative limitation. Novartis Pharms. v. Accord Healthcare Inc., Case No. 21-1070 (Fed. Cir. Jan. 3, 2022) (Linn, O’Malley, JJ.)...
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Obvious to Try Requires Reasonable Expectation of Success Tethered to Claimed Invention
By Mandy H. Kim on Dec 16, 2021
Posted In Patents
Addressing obviousness in the context of method of treatment claims using particular drug dosages, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) final written decision holding that Teva failed to prove obviousness because it failed to show a reasonable expectation of success. Teva Pharms., LLC v....
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Another Genus Claim Bites the Dust for Lack of Written Description
By Mandy H. Kim on Sep 9, 2021
Posted In Patents
Addressing the issue of written description in the context of antibody-related genus claims, the US Court of Appeals for the Federal Circuit reversed a $1.2 billion jury verdict and found genus claims using functional language invalid for lack of written description. Juno Therapeutics, Inc. v. Kite Pharma, Inc., Case No. 20-1758 (Fed. Cir. Aug. 26,...
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Government Contractors May Include Restrictive Markings on ‘Unlimited Rights’ Data
By James W. Kim and Mandy H. Kim on Jan 7, 2021
Posted In Copyrights
The US Court of Appeals for the Federal Circuit reversed an Armed Services Board of Contract Appeals (ASBCA) denial of summary judgment and held that a federal contractor may include certain restrictive markings on “unlimited rights” data supplied to the US government. The Boeing Company v. Secretary of the Air Force, Case No. 19-2147 (Fed....
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“Method of Preparation” Claims Still Patent Eligible Under § 101 in Modified Opinion
By Mandy H. Kim on Aug 13, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit denied an accused infringer’s petition for rehearing en banc and issued a modified opinion with additional analysis maintaining its prior finding that patent claims directed to a method of preparation were patent eligible. Illumina, Inc. v. Ariosa Diagnostics, Inc., Case No. 19-1419 (Fed. Cir. Aug. 3,...
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Glass Half Empty: Patent Reciting “Half Liquid” Is Indefinite
By Mandy H. Kim on Aug 13, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed the district court’s finding that the asserted patent claims were invalid as indefinite because the meaning of the term “half-liquid” was not reasonably clear from the record. IBSA Institut Biochimique, S.A. v. Teva Pharms. USA, Inc., Case No. 19-2400 (Fed. Cir. July 31, 2020) (Prost,...
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“Non-Limiting” Prior Art Claims Support Obviousness After Standing Is Established
By Mandy H. Kim on May 14, 2020
Posted In Patents
Addressing the issue of Article III standing and obviousness in an appeal of an inter partes review (IPR) decision, the US Court of Appeals for the Federal Circuit found that the petitioner had standing to appeal because past activities created a controversy between the parties. Grit Energy Solutions, LLC v. Oren Techs., LLC, Case No....
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Article III Standing Required to Appeal Final Decisions by the PTAB
By Mandy H. Kim on May 7, 2020
Posted In Patents
Addressing the issue of Article III standing in an appeal of an inter partes review (IPR) decision, the US Court of Appeals for the Federal Circuit dismissed the appeal because the party appealing failed to establish an injury sufficient to confer standing. Argentum Pharms. LLC v. Novartis Pharms. Corp., Case No. 18-2273 (Fed. Cir. Apr....
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Prima Facie Obviousness Established Where Claimed pH Range Overlaps with Prior Art Range for Similar Compounds
By Mandy H. Kim on Apr 23, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment that found a patent was not obvious because the claimed pH range would not have been obvious-to-try despite overlapping ranges between the claimed pH range and the pH range for similar prior art compounds. Valeant Pharms. Intl. v. Mylan Pharms....
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