The Federal Circuit, and the Court of Customs and Patent Appeals before it, generally reviewed decisions by the Patent and Trademark Office under the same standard applied to district court decisions, whether the factual...more
On May 20th, Junior Party the University of California, Berkeley; the University of Vienna; and Emmanuelle Charpentier (collectively, "CVC") filed its Substantive Preliminary Motion No. 3 in Interference No. 106,127 (which...more
In Becton, Dickinson & Co. v. Baxter Corp. Englewood, the Federal Circuit overturned a decision by the Patent Trial and Appeal Board (PTAB) in an inter partes review that claims in the challenged patent were not invalid for...more
In a terse, non-precedential opinion, the Federal Circuit affirmed a district court's judgment that Defendants Torrent Pharmaceuticals and Indoco Remedies Ltd. had failed to prove that the claims asserted by...more
While much has been written about the effect of the post-grant review provisions of the Leahy-Smith America Invents Act (2012) in invalidating U.S. patents, the change in the law most responsible for how easy it has become to...more
At least some of the judges on the Federal Circuit have been reported to have voiced some frustration regarding the number of appeals of decisions by the Patent Trial and Appeal Board that are on the Court's docket,...more
On September 3rd, the Federal Circuit affirmed under Rule 36 the decision by the District Court of Nevada (Du, J.) in March that the claims asserted by Amarin Pharma against West-Ward Pharmaceuticals International Ltd., Hikma...more
9/5/2020
/ Amarin ,
Appeals ,
Generic Drugs ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Pharmaceutical Patents ,
Reaffirmation ,
Rule 36
The Federal Circuit recently applied well-established principles of obviousness in affirming the Patent Trial and Appeals Board's invalidation of several patents related to antifungal formulations in Anacor Pharmaceuticals,...more
The Federal Circuit held recently that the "all substantive rights" test, used heretofore to determine the identity of the "patentee" for purposes of satisfying 35 U.S.C. § 281, should be the standard for determining common...more
7/8/2020
/ Accord and Satisfaction ,
All Substantive Rights Test ,
Appeals ,
BPCIA ,
Common Ownership ,
Contract Terms ,
IP License ,
Obviousness ,
Obviousness-Type Double Patenting (ODP) ,
Patent Infringement ,
Patent Litigation ,
Patent Prosecution ,
Patent Royalties ,
Patent Validity ,
Patents ,
Standard of Review ,
Transfer of Rights ,
Written Descriptions
The written description requirement has had a twenty-five year renaissance, particularly in the chemical and biotechnology arts as a way of restricting claim scope to what an inventor has actually invented (see Regents of the...more
6/22/2020
/ Abbreviated New Drug Application (ANDA) ,
Collateral Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Mylan Pharmaceuticals ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Written Descriptions
The inherent, ineluctable unpredictability of biology can be the basis for biological patent claims being non-obvious (lacking the requisite "reasonable expectation of success"; see, e.g., OSI Pharmaceuticals v. Apotex) and...more
On Monday, the Patent Trial and Appeal Board (PTAB) heard oral argument (remotely) from Senior Party the Broad Institute (and its partners as Senior Party, Harvard University and MIT) and Junior Party the University of...more
5/22/2020
/ CRISPR ,
DNA ,
Interference Proceeding ,
Issue Preclusion ,
Nonobvious ,
Obviousness ,
Oral Argument ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art
On April 22, 2020, the Federal Circuit "grappled," as the opinion put it, with the equitable doctrine of assignor estoppel in Hologic, Inc. v. Minerva Surgical, Inc., the Federal Circuit "grappled," as the opinion put it,...more
5/12/2020
/ Appeals ,
Apportionment ,
Assignor Estoppel ,
Damages ,
IP License ,
Obviousness ,
Parallel Proceedings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Unclean Hands
On March 23rd, Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, "Broad") filed its Reply to Junior Party the University of California/Berkeley, the University...more
The procedural niceties of the U.S. Patent and Trademark Office's implementation of the post-grant review features of the Leahy-Smith America Invents Act continue to be explicated in the Federal Circuit (and of course, the...more
4/15/2020
/ Adidas ,
Administrative Procedure Act ,
Appeals ,
Due Process ,
Motion to Amend ,
Nike ,
Notice and Comment ,
Obviousness ,
Patent Cancellation ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Reaffirmation ,
Reversal
In what may be simple happenstance, the Federal Circuit issued opinions on the same day reversing a District Court grant of summary judgment in opinions written by Judge Lourie, here in BASF Corp. v. SNF Holding Co....more
4/13/2020
/ Anticipation ,
Appeals ,
Exploitation ,
IP License ,
Obviousness ,
On-Sale Bar ,
Patent Infringement ,
Patent Litigation ,
Patent Validity ,
Patents ,
Prior Art ,
Public Use ,
Reversal ,
Section 102 ,
Summary Judgment
Summary judgment, while clearly advantageous, requires that there be no disputed question of material fact and that the moving party is entitled to judgment as a matter of law. When a district court grants judgment...more
The Federal Circuit affirmed the Patent Trial and Appeal Board's (PTAB) claim construction (and inter partes review (IPR) decision invalidating claims for obviousness) in it recent Genentech, Inc. v. Iancu decision, and also...more
4/2/2020
/ Adverse Judgments ,
Appeals ,
Claim Amendments ,
Claim Construction ,
Genentech ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Obviousness ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Reaffirmation ,
Treatment Method Patents
Ever since the Supreme Court's decision in Dickinson v. Zurko, patent applicants (and with the advent of inter partes review proceedings before the Patent Trial and Appeal Board, patentees) have found it difficult to overcome...more
3/30/2020
/ Appeals ,
Claim Construction ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Prior Art ,
Remand ,
Treatment Method Patents ,
Vacated
Expert witness testimony is a frequent (almost ubiquitous) feature of patent litigation, if only because questions of the state of the art or the understanding of one having ordinary skill in the art are almost always at...more
2/10/2020
/ Abuse of Discretion ,
Admissible Evidence ,
Appeals ,
Claim Construction ,
Expert Witness ,
Eyewitness Testimony ,
Federal Rules of Evidence ,
Jury Trial ,
Motion For New Trial ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
State of the Art Defense ,
Summary Judgment ,
Unfair Prejudice ,
Witnesses
Last week, the Federal Circuit affirmed a District Court decision (by Circuit Judge Bryson, sitting by designation) in an ANDA litigation, finding obvious claims asserted for treating patients having mild to moderate hepatic...more
Last week, the Federal Circuit overturned an obviousness determination in an inter partes review by the Patent Trial and Appeal Board in OSI Pharmaceuticals LLC v. Apotex Inc. The Court also reaffirmed its holdings in...more
The Federal Circuit applied the constitutional principle under Article III that there must be a case or controversy for a federal court to enter judgment (in this case, of invalidity) in ANDA litigation that can be vitiated...more
Last week, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) finding claims of U.S. Patent No. 7,064,197 to be invalid for anticipation or obviousness, in Enzo Life Sciences, Inc. v. Becton,...more
Last week, the Federal Circuit reversed findings of non-obviousness and affirmed (over Chief Judge Prost's dissent) a finding that claims asserted in ANDA litigation were not invalid for failure to satisfy the written...more