Peter Marston
Subscribe to Peter Marston's PostsPeter (Pete) Marston focuses his practice on intellectual property litigation matters. Read Pete Marston's full bio.
Prosecution history primacy: “Consisting essentially of” means what applicant said it meant
By Peter Marston on Jul 10, 2025
Posted In Life Sciences, Patents
In a decision that underscores the primacy of prosecution history to determine claim scope, the US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s interpretation of the transitional phrase “consisting essentially of,” holding that the patentee’s actions during prosecution narrowed the claims beyond the conventional construction. Eye Therapies, LLC...
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CRISPR Clarity: Enablement Is Analyzed Differently Under §§ 102 and 112
By Peter Marston on Jun 18, 2025
Posted In Life Sciences, Patents
In a decision underscoring the distinct standards governing enablement under §§ 102 and 112, the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that a prior art reference was enabling for purposes of anticipation, even in the absence of working examples. Agilent Technologies, Inc. v. Synthego Corp.,...
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The Devil Is in the Details: Bioequivalence, In Vitro Testing Not Enough to Establish Infringement
By Peter Marston on Dec 19, 2024
Posted In Patents
Addressing for the first time the issue of whether bioequivalence data and in vitro testing can show that an abbreviated new drug application (ANDA) product with different immediate and delayed release portions infringed on a patent, the US Court of Appeals for the Federal Circuit upheld the district court’s finding of noninfringement. Galderma Laboratories, L.P....
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