Donald Zuhn

Donald Zuhn

McDonnell Boehnen Hulbert & Berghoff LLP

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Sequenom Requests Rehearing En Banc

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

8/19/2015 - Method Claims Myriad-Mayo Patent Invalidity Patent-Eligible Subject Matter Patents Petition For Rehearing Summary Judgment

Ferrum Ferro Capital Files Motion to Strike Allergan's Complaint Alleging Misuse of IPR Process

In June, Allergan, Inc. and Allergan Sales, LLC filed suit against Ferrum Ferro Capital, LLC and Kevin Barnes ("FFC") in the U.S. District Court for the Central District of California, alleging that FFC attempted to extort...more

8/13/2015 - Allergan Inc ANDA Anti-SLAPP Cal Code of Civil Procedure Extortion Inter Partes Review Proceedings Malicious Prosecution Patents Pharmaceutical Manufacturers Pharmaceutical Patents Unfair Competition

USPTO News Briefs - August 2015

USPTO to Replace EFS-Web and PAIR - In an article posted on the Director's Forum blog, U.S. Patent and Trademark Office Deputy Director Russ Slifer announced that the Office would begin implementing a new system that...more

8/10/2015 - Brazil Google Java Microsoft Patent Applications Patents Public Comment USPTO

Representatives Seek Protections for Hatch-Waxman and BPCIA in Innovation Act

Last month, in a letter to Congressional leadership, 79 Members of Congress expressed their support for the Innovation Act (H.R. 9) but sought inclusion of language in the bill "to preserve the integrity of the Drug Price...more

8/7/2015 - America Invents Act BPCIA Drug Manufacturers FDA Approval Generic Drugs Hatch-Waxman Innovation Act Inter Partes Review Proceedings Patent Infringement Patent Litigation Patents Pharmaceutical Manufacturers Pharmaceutical Patents Prescription Drugs USPTO

JPO and USPTO Announce PCT and Search Collaborations

Earlier this month, the U.S. Patent and Trademark Office announced two new collaborations with the Japan Patent Office. In a press release issued on July 1, the USPTO announced an agreement with the JPO in which the JPO will...more

7/29/2015 - Federal Pilot Programs International Searching Authority Japan JPO Patent Cooperation Treaty Patents USPTO

CBO Provides Cost Estimate to Government to Implement Innovation Act

Earlier this month, the Congressional Budget Office (CBO) issued a cost estimate for the Innovation Act (H.R. 9). The bill, which was introduced in February, was reported by the House Committee on the Judiciary in June. The...more

7/28/2015 - Congressional Budget Office GAO Innovation Act Patent Infringement Patent Litigation Patent Ownership Patents Pending Legislation USPTO

Daiichi Sankyo Co. v. Lee (Fed. Cir. 2015)

Earlier this month, in Daiichi Sankyo Co. v. Lee, the Federal Circuit affirmed the decision by the District Court for the District of Columbia granting summary judgment to the Director of the U.S. Patent and Trademark Office...more

7/21/2015 - Administrative Procedure Act America Invents Act Judicial Review Patent Litigation Patent Term Adjustment Patents Summary Judgment USPTO

Allergan Fights Back, Files Complaint Against Venture Fund That Filed IPR Petition

Last month, Allergan, Inc. and Allergan Sales, LLC filed suit against Ferrum Ferro Capital, LLC and Kevin Barnes ("FFC") in the U.S. District Court for the Central District of California, alleging that FFC attempted to extort...more

7/14/2015 - America Invents Act ANDA Extortion FDA Inter Partes Review Proceedings Malicious Prosecution Patent Litigation Patents Prior Art Unfair Competition Validity

Mohsenzadeh v. Lee (Fed. Cir. 2015)

Last month, in Mohsenzadeh v. Lee, the Federal Circuit affirmed the decision by the District Court for the Eastern District of Virginia granting summary judgment to the Director of the U.S. Patent and Trademark Office that...more

7/9/2015 - Appeals Delay Claims Late Notices Patent Litigation Patent Term Adjustment Patents Summary Judgment

NAI & IPO Release List of Top 100 Universities Receiving Patents in 2014

Last month, the National Academy of Inventors (NAI) and the Intellectual Property Owners Association (IPO) published a list of the top 100 worldwide universities that received the most U.S. utility patents in 2014. The NAI...more

7/6/2015 - Inventors Nonprofit Research Organizations Patents Trade Associations Universities Utility Patents

IPO Releases List of Top 300 Patent Holders for 2014 - Life Sciences Top 55

Last week, the Intellectual Property Owners Association (IPO) announced the release of its 32nd annual list of the top 300 organizations receiving U.S. patents (see "Top 300 Organizations Granted U.S. Patents in 2014"). ...more

7/2/2015 - Intellectual Property Owners Association Life Sciences Medical Devices Patents Utility Patents

Group of National and State Organizations Asks Congress to Enact Legislative Reforms to Maintain Strong Patent System

Last month, more than 90 national and state advocacy organizations sent a letter to the leadership of the House and Senate Judiciary Committees, urging Congress to enact legislative reforms that will maintain a strong and...more

6/2/2015 - America Invents Act Patent Invalidity Patent Reform Patent Trial and Appeal Board Patents Pharmaceutical Pharmaceutical Manufacturers Prescription Drugs USPTO

Koepsell and Noonan on Gene Patenting

In 2009, the first edition of Dr. David Koepsell's book "Who Owns You: The Corporate Gold Rush to Patent Your Genes" was published. With the second edition of his text about to be published, Dr. Koepsell allowed Patent Docs...more

5/29/2015 - BRCA DNA Gene Patenting Myriad Myriad-Mayo Patent-Eligible Subject Matter Patents

Senator Asks Department of Veteran Affairs to Break Patents on Hepatitis C Drugs

Last week, in a letter addressed to the Secretary of the U.S. Department of Veteran Affairs, Senator Bernard Sanders (I-VT) urged Secretary Robert McDonald to use his authority as Secretary "to break the patents on Hepatitis...more

5/19/2015 - Department of Veterans Affairs Gilead Sciences Government Contractors Patents Pharmaceutical Pharmaceutical Manufacturers Prescription Drugs Veterans

Senators Send Letter on Biosimilars to FDA

A group of Senators led by Sen. Lamar Alexander (R-TN), the Chairman of the Senate Committee on Health, Education, Labor, and Pensions, sent a letter last month to Dr. Stephen Ostroff, the Acting Commissioner of the U.S. Food...more

5/11/2015 - Biosimilars BPCIA FDA Legislative Agendas Patents Pharmaceutical Manufacturers Pharmaceutical Patents

USPTO Places Limits on PAIR Downloads

A colleague pointed out today that the U.S. Patent and Trademark Office has apparently begun to restrict the ability of users to make bulk downloads from Public PAIR. While we have not noticed any recent download...more

5/8/2015 - Patents USPTO

Primer on Global and IP5 Patent Prosecution Highway Pilot Programs

Following the implementation of its first Patent Prosecution Highway (PPH) program with the Japan Patent Office (JPO) in 2006, the U.S. Patent and Trademark Office proceeded to establish PPH programs with nearly thirty other...more

5/6/2015 - Japan Patent Office Patent Prosecution Patent Prosecution Highway Patents USPTO

Quest Diagnostics and Inserm Launch BRCA Data-Sharing Initiative

Last week, diagnostics services provider Quest Diagnostics and Inserm, the French National Institute of Health and Medical Research institution, announced the launch of BRCA Share, a new datashare initiative that will provide...more

4/30/2015 - BRCA Clinical Laboratories Data-Sharing Genetic Testing Life Sciences Patents Pharmaceutical

Legislation Introduced in House to Eliminate Uncertainty Regarding AIA Grace Period

Last week, legislation was introduced in the House of Representatives that would amend 35 U.S.C. § 102(b) "to correct the drafting problem in the Leahy-Smith America Invents Act relating to the grace period." The bill,...more

4/21/2015 - America Invents Act Grace Period Inventors Patents Pending Legislation Public Disclosure

USPTO Announces Patents for Humanity Winners

On Monday, the U.S. Patent and Trademark Office announced the latest winners of the Patents for Humanity program. The Patents for Humanity program, which was launched by the Office in February 2012, is a competition...more

4/14/2015 - Patents USPTO

BIO Commissioned Study Calculates Economic Contribution of University/Nonprofit Inventions in the U.S.

Last month, the Biotechnology Industry Organization (BIO) announced the release of a BIO commissioned study that estimates the economic impact of academic licensing between 1996 and 2013. The study, entitled "The Economic...more

4/10/2015 - Biotechnology Colleges Educational Institutions GATT GDP Inventors IP License Patents Universities

Patent Offices Issue Warnings Regarding Fraudulent Requests for Fees

Several patent offices, including the European Patent Office (EPO), United Kingdom Intellectual Property Office (UK IPO), World Intellectual Property Organization (WIPO), and Israel Patent Office (ILPO), have recently issued...more

4/2/2015 - Filing Fees Patents Scams

WIPO Releases Data on 2014 International Patent Filings

Last week, the World Intellectual Property Organization (WIPO) released data on 2014 international application filings under the Patent Cooperation Treaty (PCT). WIPO noted that U.S. and Japanese filings accounted for almost...more

3/26/2015 - Patent Cooperation Treaty Patent Filings Patents Popular WIPO

USPTO Issues Final Rule in View of Novartis v. Lee

Earlier this year, the U.S. Patent and Trademark Office published a final rule in the Federal Register (80 Fed. Reg. 1346) to revise the rules of practice to implement the Federal Circuit's decision in Novartis AG v. Lee. ...more

3/17/2015 - Final Rules Novartis Patent Term Adjustment Patents Request for Continued Examination USPTO

Deputy Director Provides Keynote at PTO Day

One day after the U.S. Senate confirmed her nomination as Director of the U.S. Patent and Trademark Office, Deputy Director Michelle Lee provided the luncheon address at the 25th Annual Conference on USPTO Law and Practice...more

3/11/2015 - Administrative Appointments Inter Partes Review Proceedings Patent Trial and Appeal Board Patents USPTO

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