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
On January 9th, Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, "CVC") filed a Motion in Opposition to Senior Party The Broad Institute, Harvard...more
2/11/2020
/ CRISPR ,
Evidence ,
Interference Claims ,
Life Sciences ,
Patent Litigation ,
Patent Oppositions ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Prior Art ,
Rebuttable Presumptions ,
Universities
The Federal Circuit continued its explication of the circumstances wherein an inter partes review petition is time-barred under 35 U.S.C. § 315(b) in Mayne Pharma Int'l v. Merck Sharp & Dohme Corp., decided earlier this...more
There are provisions and interpretations of U.S. patent law that can be in tension depending on the circumstances under which they are argued, whether before an Examiner or during litigation. One of these is the dichotomy...more
Patent law is known for its several challenges in sufficiently capturing an invention, tangible in form and substance, in words with all their limitations. Patent law is known for being littered with traps for the unworthy. ...more
The varying appellate fortunes of patentees regarding the question of obviousness is illustrated nicely in the Federal Circuit decision in Orexo AB v. Actavis Elizabeth LLC handed down earlier this month. The statute, 35...more
The University of California/Berkeley filed its opening brief to the Federal Circuit last week, asking that Court to overturn the Patent Trial and Appeal Board's decision that there was no interference-in-fact between...more
In an otherwise unremarkable albeit precedential decision, the Federal Circuit set forth an explication of when the Patent Trial and Appeal Board has, and has not, given the court enough information to determine whether its...more
From the nadir of the Supreme Court's allegations that the Federal Circuit "fundamentally misunderstood" the law of inducing infringement in Limelight Networks, Inc. v. Akamai Technologies, Inc., the nation's specialized...more
In a precedential decision the Federal Circuit vacated and remanded a Patent Trial and Appeal Board decision invalidating claims from Nuvasive's U.S. Patent No. 8,361,156 in an inter partes review instituted on a petition by...more
The Federal Circuit recently affirmed a district court's claim construction and determination that claim terms were not indefinite in Massachusetts Institute of Technology v. Shire Pharmaceuticals, Inc....more
Before the Supreme Court's recent forays into the topic of subject matter eligibility in patent law, the most contentious line of cases (from the Federal Circuit) concerned the written description requirement of Section 112. ...more
The complexities that can be attendant on defending against an infringement allegation, and the possibility that a straightforward path to non-infringement can be complicated by claim construction even for terms construed...more
Many of the complaints from patent holders over the PTO's inter partes review process under the Leahy-Smith America Invents Act (codified in pertinent part at 35 U.S.C. §§ 311-319) stem from how the Office has implemented...more
8/29/2016
/ Administrative Procedure Act ,
Administrative Proceedings ,
Appeals ,
Genzyme ,
Inter Partes Review (IPR) Proceeding ,
Notice Requirements ,
Obviousness ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry ,
Prior Art
Cold Spring Harbor Laboratory (CSHL) is a storied institution in molecular biology, being the site of annual meetings related to this view of life since Schrodinger proposed to use quantitative methods to examine biology in...more
Early last month, the Federal Circuit addressed an important question regarding the interplay between a decision to institute inter partes review before the Patent Trial and Appeal Board and the ultimate determination by the...more
Last Thursday, the Federal Circuit handed down its non-precedential decision in Purdue Pharma v. Depomed, reviewing the decision of the Patent Trial and Appeal Board on three related inter partes reviews. While not quite a...more
Last week the Federal Circuit affirmed a District Court's finding of invalidity and non-infringement in ANDA litigation between Spectrum Pharmaceuticals and Sandoz. In so doing, the Court deferred to the factual...more
10/15/2015
/ Abbreviated New Drug Application (ANDA) ,
De Novo Standard of Review ,
Doctrine of Equivalents ,
Estoppel ,
FDA Approval ,
Generic Drugs ,
Obviousness ,
Orange Book ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Pharmaceutical Patents ,
Prescription Drugs ,
Prior Art ,
Sandoz
Earlier this summer, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted...more
9/24/2015
/ Amicus Briefs ,
AMP v Myriad ,
CLS Bank v Alice Corp ,
En Banc Review ,
Intellectual Property Protection ,
Mayo v. Prometheus ,
Novartis ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
Pharmaceutical Patents ,
Prior Art ,
SCOTUS ,
Sequenom
Earlier this summer, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted...more
9/23/2015
/ Amicus Briefs ,
AMP v Myriad ,
CLS Bank v Alice Corp ,
En Banc Review ,
Mayo v. Prometheus ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
Prior Art ,
SCOTUS ,
Sequenom ,
TRIPS Agreement ,
USPTO
Earlier this summer, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted...more
9/18/2015
/ Amicus Briefs ,
AMP v Myriad ,
CLS Bank v Alice Corp ,
En Banc Review ,
Mayo v. Prometheus ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
Prior Art ,
SCOTUS ,
Sequenom
One of the statistics gleaned from Director Michelle Lee's recent blog on the post-issuance review provisions of the America Invents Act is that only 42% of inter partes review petitions have been granted over the past three...more
8/25/2015
/ Abuse of Process ,
America Invents Act ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Prior Art
In This Issue:
- The Analysis for Design Patent Infringement Post-Egyptian Goddess
- Supreme Court Issues Decision in Alice Corp. v. CLS Bank
- Capitol Records, LLC v. Pandora Media, Inc.: Future of...more
8/27/2014
/ Capitol Records ,
CLS Bank v Alice Corp ,
Copyright ,
Design Patent ,
Digital Media ,
Music Industry ,
Pandora ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Prior Art ,
SCOTUS
Fritz Machlup, an economist, once said that if we didn't have a patent system it would be irresponsible to recommend one, but since we have one, it would be irresponsible to abolish it. An Economic Review of the Patent...more
12/20/2013
/ Bayh-Dole Act ,
BRCA ,
GATT ,
Inventors ,
Licenses ,
Myriad ,
Patent Reform ,
Patent-Eligible Subject Matter ,
Patents ,
Pharmaceutical Industry ,
Prior Art ,
Royalties ,
Technology ,
Universities ,
WTO
Enactment of the Leahy-Smith America Invents Act in 2011 focused the patenting community on the changes of U.S. patent law from "first to invent" under the 1952 Patent Act to "first inventor to file" under the AIA as the...more