Opinions — Thursday, April 16, 2026

In Candela Corp. v. Nikolai Tankovich, the parties jointly moved to dismiss an appeal from the Patent Trial and Appeal Board in IPR2023-00234, and the Federal Circuit granted voluntary dismissal under Federal Rule of Appellate Procedure 42(b), with each side to bear their own costs.

In In re Sansone, the Federal Circuit denied petitioner Stanley A. Sansone's petition for a writ of mandamus seeking relief related to the USPTO's handling of two patent applications, holding that petitioner failed to demonstrate a clear and indisputable right to relief or the absence of adequate alternative remedies as required under the standard articulated in Cheney v. U.S. Dist. Ct. for D.C. The court granted Sansone's motion to proceed in forma pauperis but denied the petition, noting as to one application that the court lacks jurisdiction to review the Director's denial of petitions to withdraw abandonment under In re Makari, and as to the other that Sansone had not shown inadequacy of the PTO's existing process to address his filing date challenge.

The Federal Circuit reversed the District of Massachusetts's grant of judgment as a matter of law of invalidity for lack of written description and enablement under 35 U.S.C. § 112, reinstating a jury verdict that found Eli Lilly willfully infringed Teva's U.S. Patent Nos. 8,586,045, 9,884,907, and 9,884,908, which claim methods of treating headache using humanized anti-CGRP antagonist antibodies. The district court had granted JMOL despite acknowledging the jury could have found that murine anti-CGRP antagonist antibodies were known in the art, methods for making and humanizing them were routine, and skilled artisans would understand all humanized anti-CGRP antagonist antibodies would treat headache. The Federal Circuit held that under the clear-and-convincing-evidence standard applicable to invalidity, a reasonable jury could have found adequate written description even though the specification disclosed only one humanized anti-CGRP antagonist antibody species (fremanezumab, the active ingredient in Ajovy), because the claimed genus of humanized anti-CGRP antagonist antibodies was well-known and not itself the invention—the invention was using such antibodies to treat headache.

The decision clarifies the written description analysis for genus claims where the genus is a well-known, pre-existing class of compounds used as a component of the claimed invention rather than the invention itself. Drawing on Ajinomoto Co. v. ITC, In re Herschler, and the plurality in In re Fuetterer, the court distinguished between claims to novel compounds per se (which typically require disclosure of a representative number of species or common structural features) and claims using known compounds in a manner auxiliary to the actual invention. Where the genus is "already well explored" in the art and the specification makes clear that any member would work in the claimed method, the written description requirement does not demand extensive species disclosure. This framework has significant implications for pharmaceutical method-of-treatment claims that employ well-characterized biological molecules, potentially allowing narrower disclosures when the therapeutic application, rather than the therapeutic agent itself, constitutes the inventive contribution. The decision effectively insulates such claims from written description challenges based on Lilly's own IPR arguments that the antibody genus was well-known—a strategic consideration for litigants taking inconsistent positions across parallel proceedings.

In FullView, Inc. v. Polycom, Inc., the Federal Circuit denied FullView's petition for permission to appeal interlocutory orders from the Northern District of California that had determined certain patent claims invalid under 35 U.S.C. § 101 and excluded FullView's expert damages testimony. Although the district court certified the orders under 28 U.S.C. § 1292(b), the Federal Circuit exercised its discretion to decline permission to appeal, citing In re Convertible Rowing Exerciser Patent Litigation, 903 F.2d 822 (Fed. Cir. 1990).