News & Analysis as of

Life Sciences Appeals Patent Litigation

Smart & Biggar

PM(NOC) Regulations: seven-year anniversary of major amendments

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September 21, 2024, marked the seventh anniversary of the significant amendments to the Patented Medicines (Notice of Compliance) Regulations (Regulations). This article provides an update on activities in the seventh year...more

Goodwin

The Appeals Review Panel’s In Re Xencor Decision: The USPTO Provides Its Position on Written Description and Means-Plus-Function...

Goodwin on

On May 17, 2024, an Appeals Review Panel (ARP) of the United States Patent and Trademark Office (“USPTO”) released its decision in Ex parte Chamberlain (referred to in Federal Circuit proceedings as In re Xencor;...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2024 #3

Copan Italia SPA v. Puritan Med. Prods. Co. LLC, Appeal No. 2022-1943 (Fed. Cir. May 14, 2024) The Federal Circuit’s only precedential opinion concerning a patent case this week had nothing to do with patent law....more

Knobbe Martens

Routine Optimization of Result-Effective Variable Can Bridge Gaps in Prior Art

Knobbe Martens on

PFIZER INC. v. SANOFI PASTEUR INC. - Before Lourie, Bryson, and Stark.  Appeal from the Patent Trial and Appeal Board....more

McDermott Will & Emery

Specially Convened Rehearing Panel Vacates IPR Institution Denial

McDermott Will & Emery on

In a rehearing decision issued by a Delegated Rehearing Panel specially convened by the US Patent & Trademark Office (PTO) Director, the Patent Trial & Appeal Board vacated a prior panel decision denying institution, modified...more

A&O Shearman

Federal Circuit affirms district court finding of no induced or contributory infringement of generic depression drug

A&O Shearman on

In H. Lundbeck A-S v. Lupin Ltd., Case No. 2022-1194 (Fed. Circ. December 7, 2023), Plaintiffs, H. Lundbeck A/S (“Lundbeck”) and Takeda Pharmaceutical Company Ltd., Takeda Pharmaceuticals U.S.A., Inc., Takeda Pharmaceuticals...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - November 2023 #3

In this week’s Case of Week, the Federal Circuit affirmed inter partes review decisions upholding as patentable Teleflex’s challenged patent claims directed to a method for use of a guide extension catheter in arteries. This...more

A&O Shearman

SCOTUS denies cert in skinny label appeal from the Federal Circuit

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On May 15, 2023, the Supreme Court of the United States denied Teva Pharmaceuticals USA, Inc.’s (“Teva”) petition for certiorari in Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline, LLC, ending a nearly nine-year court...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2022 #3

Novartis Pharms. Corp. v. Accord Healthcare, Inc., Appeal No. 2021-1070 (Fed. Cir. June 21, 2022) - In this week’s Case of the Week, the Federal Circuit granted panel rehearing of and vacated its prior decision in Novartis...more

Knobbe Martens

Silence Is No Support for Negative Claim Limitation

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NOVARTIS PHARMACEUTICALS CORP. V. HEC PHARM CO., LTD. Before Moore, Hughes, and Linn (dissenting). Appeal from the United States District Court for the District of Delaware. Summary:  Silence regarding the presence or...more

Knobbe Martens

Cancer Drug Patent Not Dead Yet

Knobbe Martens on

(Mar. 31, 2022) Last Friday, ImmunoGen won an appeal at the Federal Circuit in ImmunoGen, Inc. v. Hirshfeld. The lawsuit is a civil action to order the granting of U.S. Application No. 14/509,809 (‘809), titled “Anti-FOLR...more

Proskauer - Life Sciences

Update on Artificial Intelligence as a Patent Inventor

Our previous blog posts, Artificial Intelligence as the Inventor of Life Sciences Patents? and Update on Artificial Intelligence: Court Rules that AI Cannot Qualify As “Inventor,” discuss recent inventorship issues...more

Knobbe Martens

No Standing in IPR Appeal for Sublicensee’s Speculative Royalty-Based Injuries

Knobbe Martens on

MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION - Before Lourie, O’Malley, and Stoll.  Appeal from the Patent Trial and Appeal Board. Summary: Sublicensee’s theory of royalty-based injury was too speculative to...more

Knobbe Martens

Written Description: What Is the Proper “Dosage” to Satisfy This Requirement?

Knobbe Martens on

BIOGEN INTERNATIONAL GMBH V. MYLAN PHARMACEUTICALS INC. Before O’Malley, Reyna, and Hughes. Appeal from the United States District Court for the Northern District of West Virginia. Summary: A specification may not...more

Fenwick & West LLP

Intellectual Property Bulletin - Summer 2021

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In This Issue - Assignor Estoppel: When Are Inventors Allowed to Attack Their Own Inventions? In Minerva v. Hologic, the Supreme Court recently upheld the patent-law doctrine of assignor estoppel—which bars the...more

McDermott Will & Emery

Special Report - 2020 IP Law Year in Review: Patents

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In 2020, the US Supreme Court and Court of Appeals for the Federal Circuit continued to refine key aspects of intellectual property law on issues that will have an impact on litigation, patent prosecution and business...more

Wilson Sonsini Goodrich & Rosati

Federal Circuit Holds That Claims of a Patent Asserted During a Patent Term Extension Are Not Infringed by the Carboxylic Acid...

Recently, the Federal Circuit issued its holding in a case dealing with asserting claims of an extended patent covering administration of dimethyl fumarate formulations to treat multiple sclerosis (MS). Dimethyl fumarate...more

Fox Rothschild LLP

Illumina v. Ariosa: Carving Out A New “Bucket” Of Section 101 Patent Eligible Claims

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Case Summary- On March 17, 2020, the Federal Circuit found that patents claiming methods of preparing an extracellular fraction of cell-free DNA that is enriched in fetal DNA were patent eligible and not invalid under 35...more

Holland & Knight LLP

Section 101 Update: Pharmaceutical and Life Sciences March 2020

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This month, the U.S. Court of Appeals for the Federal Circuit has handed down a pair of opinions concerning Section 101 in the field of pharmaceuticals and life sciences. In both cases, the district courts held claims of the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Illumina, Inc. v. Ariosa Diagnostics, Inc. (Fed. Cir. 2020)

The latest Federal Circuit decision on subject matter eligibility in the life sciences came down (by a divided court) in favor of eligibility, in Illumina, Inc. v. Ariosa Diagnostics, Inc.  The claims at issue fell into the...more

Troutman Pepper

IPR Institution Is Not Permanent, and Is Nonappealable – Part 2

Troutman Pepper on

Biodelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Inc., Appeal Nos. 2019-1643, -1644, -1645 (Fed. Cir., January 13, 2020) - On August 29, 2019, we reported on the Biodelivery decision, where the PTAB received on...more

Morgan Lewis

Federal Circuit: Inherency in an Obviousness Analysis

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The US Court of Appeals for the Federal Circuit held that data obtained after an asserted patent’s priority date may be used to demonstrate what is “necessarily present” in a prior art embodiment. Although the district court...more

Robins Kaplan LLP

INO Therapeutics LLC v. Praxair Distribution Inc.

Robins Kaplan LLP on

BUT FOR A CLERICAL ERROR TO BE ADDRESSED ON REMAND, THE FEDERAL CIRCUIT AFFIRMS FINDINGS OF INELIGIBLE SUBJECT MATTER AND NON-INFRINGEMENT. Case Name: INO Therapeutics LLC v. Praxair Distribution Inc., 2019 U.S. App. LEXIS...more

McDermott Will & Emery

Incomplete Hybridization: Lack of Enablement Found Where Claims Encompass Thousands of Possibilities

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Finding that the number of possible embodiments that could fit within the limitations of the asserted claims numbered in the “tens of thousands,” the US Court of Appeals for the Federal Circuit held that the claims were not...more

Hogan Lovells

Patent Litigation: Dutch Court of Appeal guidance on formal entitlement to priority

Hogan Lovells on

On 30 July, the Court of Appeal of The Hague ruled on the formal entitlement to priority following from a US provisional patent application. The attack on priority in this case is part of a recent trend by parties in patent...more

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