Incorrect Translation Causing a Claim to Be Indefinite Under 35 U.S.C. § 112—A Case Study of IBSA Institut Biochimique,S.A. v. Teva Pharmaceuticals USA,Inc.

Abstract

IBSA Institut Biochimique, S.A. v. Teva Pharmaceuticals USA, Inc., 966 F.3d 1374 (Fed. Cir. 2020), shows a case of inaccurate translation leading the court to find the asserted claims invalid. The disputed term “half-liquid” was found unclear in terms of whether pastes and gels should fall within or be excluded from the patentee's construction of “half-liquid.” This article examines the IBSA case and argues that there could have been a chance to avoid such mistake. This article also demonstrates that the translation error is not correctable under 35 U.S.C. § 255.