Kevin E. Noonan

Kevin E. Noonan

McDonnell Boehnen Hulbert & Berghoff LLP

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MAG Aerospace Industries, Inc. v. B/E Aerospace, Inc. (Fed. Cir. 2016) - Equitable Assignor Estoppel Doctrine Expanded by Federal...

Arcane aspects of the law are frequently analogized as constituting "traps for the unwary," and patent law seems to have more than its share of minutiae that fall within that characterization. The equitable principle of...more

6/24/2016 - Aerospace Estoppel IP Assignment Agreements Patent Infringement Patents Privity of Contract Summary Judgment

The CREATE Act of 2016: Senate Listens to Generics Industry

Last week, co-sponsors Senators Leahy (D-VT), Grassley (R-IA), Klobucher (D-MN), and Lee (R-UT) introduced a bill (S. 3056), entitled the "Creating and Restoring Equal Access to Equivalent Samples Act of 2016" or the "CREATES...more

6/23/2016 - Biologics Biosimilars BPCIA CREATE Act Drug Pricing FDA Generic Pharmaceutical Industry Proposed Legislation

Cuozzo Speed Technologies LLC v. Lee (2016)

In its first pronouncement regarding the post-grant reviewing proceedings established by the America Invents Act ("AIA"), the Supreme Court ruled that the Patent and Trademark Office's positions on two of the law's provisions...more

6/21/2016 - Administrative Proceedings America Invents Act Appeals Broadest Reasonable Interpretation Standard Chevron Deference Claim Construction Cuozzo Speed Technologies v Lee Inter Partes Review Proceedings Judicial Review Patent Trial and Appeal Board Patents SCOTUS Standard of Review USPTO

Supreme Court Rules District Courts to Have More Discretion in Finding Willful Patent Infringement by Malicious Pirates

On June 13, 2016, the Supreme Court ruled unanimously, in an opinion by Chief Justice Roberts, that an award of enhanced damages pursuant to 35 U.S.C. § 284 should be within the sound discretion of a district court, albeit...more

6/14/2016 - 35 U.S.C. § 284 Abuse of Discretion Appeals Enhanced Damages Halo v Pulse Highmark Octane Fitness v. ICON Patent Infringement Patents SCOTUS Standard of Proof Standard of Review Stryker v Zimmer Totality of Circumstances Test Willful Infringement

Halo Electronics, Inc. v. Pulse Electronics, Inc. and Stryker Corp. v. Zimmer, Inc. (2016)

The aphorism that "[t]he race is not always to the swift nor the battle to the strong, but that's the way to bet," variously attributed to Damon Runyon, Franklin P. Adams, and Hugh Keough, could readily be updated to include...more

6/14/2016 - 35 U.S.C. § 284 Abuse of Discretion Enhanced Damages Halo v Pulse Highmark Octane Fitness v. ICON Patent Infringement Patents SCOTUS Standard of Proof Standard of Review Stryker v Zimmer Totality of Circumstances Test Willful Infringement

Bloomberg/BNA Releases Report on Biopharma IPRs

As part of a session on the effects of inter partes review on biopharma patents presented today at the 2016 BIO International Convention, Bloomberg/BNA released a report on more than 300 biopharma patents that have been...more

6/8/2016 - Biopharmaceutical Bloomberg Inc. Inter Partes Review Proceedings Patents Pharmaceutical Industry Pharmaceutical Patents

The Recent PTO Guidance on Subject Matter Eligibility: Lessons

A few years ago, former PTO Solicitor General Nancy Linck arose from the audience at the BIO International Conference to provide her thoughts on how the Office had responded to the Supreme Court's decisions in Mayo v....more

5/26/2016 - Abstract Ideas CLS Bank v Alice Corp Myriad-Mayo New Guidance Patent-Eligible Subject Matter Patents Product of Nature Doctrine Section 101 USPTO

U.S. Trade Representative Issues 2016 Special 301 Report

On April 27th, Ambassador Michael B.G. Froman, U.S. Trade Representative (USTR), issued the 2016 Special 301 Report. According to the USTR website, "[i]ntellectual property is a critical source of economic growth and...more

5/20/2016 - Copyright Counterfeiting Film Industry Global Market Innovation Intellectual Property Protection Inter Partes Review Proceedings Life Sciences Medical Research Patents Pharmaceutical Patents Piracy Software Trade Secrets Trademarks USTR WIPO

Intendis GmbH v. Glenmark Pharmaceuticals Inc., USA (Fed. Cir. 2016)

The Federal Circuit and the Supreme Court spent an inordinate amount of time wrestling with each of their conceptions of the scope and application of the doctrine of equivalents a dozen years ago, coming to an accommodation...more

5/18/2016 - ANDA Doctrine of Equivalents Orange Book Patent Infringement Pharmaceutical Industry Pharmaceutical Patents

Merck & Cie v. Watson Laboratories, Inc. (Fed. Cir. 2016)

The Federal Circuit had the occasion to revisit the proper application of the on-sale bar under 35 U.S.C. § 102(b) in ANDA litigation over claim 4 of U.S. Patent No. 6,441,168, which reads...more

5/17/2016 - ANDA Bayer Contract Disputes Merck Patent Litigation Pharmaceutical Industry Watson Pharmaceuticals

USPTO Holds Patent Quality Symposium

On April 27th, the U.S. Patent and Trademark Office held a Patent Quality Community Symposium at the Office in Alexandria, VA (consistent with its efforts to disseminate its workforce into regional offices, the offices in...more

5/5/2016 - EPO IPO JPO KIPO Patent Quality Metrics Patents Symposium USPTO WIPO

The Fantastical World of Justice Stephen Breyer

In a recent book entitled Imbeciles: The Supreme Court, American Eugenics, and the Sterilization of Carrie Buck, author Adam Cohen examines the case of Buck v. Bell, where Justice Oliver Wendell Holmes wrote that "[t]hree...more

4/29/2016 - Innovation IP License Justice Breyer Patent Infringement Patent Trolls Patents SCOTUS Small Business Software Patents USPTO

PTAB Statistics From Spring BIO IPCC Meeting

At the end of March, the Intellectual Property Counsels' Committee (IPCC) of the Biotechnology Innovation Organization (BIO) held its Spring meeting, convening in-house counsel and outside counsel involved in patenting the...more

4/18/2016 - Biotechnology Inter Partes Review Proceedings Orange Book Patent Trial and Appeal Board Pharmaceutical Industry

PTAB Denies IPR Petitions against Cold Spring Harbor Laboratory Patents

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

4/14/2016 - Genetic Materials Inter Partes Review Proceedings Pharmaceutical Patents Prior Art

Genetic Technologies Ltd. v. Merial L.L.C. (Fed. Cir. 2016)

The Federal Circuit affirmed the latest invalidation of genetic diagnostic claims last week, in Genetic Technologies Ltd. v. Merial L.L.C. While consistent with (and expressly relying upon) recent Federal Circuit precedent...more

4/11/2016 - Diagnostic Method DNA Genetic Technologies Ltd. Patent Infringement Patent Litigation

FDA Releases Naming Guidance

The Biologic Price Control and Innovation Act (BPCIA), enacted as part of President Obama's Affordable Care Act (better known as "Obamacare," Public Law 111-148), provided for the first time in the U.S. a path for FDA...more

4/7/2016 - Affordable Care Act BPCIA FDA New Guidance Pharmaceutical Patents Warning Labels

TriVascular, Inc. v. Samuels (Fed. Cir. 2016)

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

3/30/2016 - Burden of Proof Claim Construction Inter Partes Review Proceedings Obviousness Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents Prior Art

Purdue Pharma L.P. v. Depomed, Inc. (Fed. Cir. 2016)

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

3/28/2016 - Evidence Inter Partes Review Proceedings Obviousness Patent Litigation Patent Trial and Appeal Board Patents Pharmaceutical Industry Pharmaceutical Patents Prior Art

CRISPR Interference Motions Set

The Patent Trial and Appeal Board has made its decision regarding the motions each party will be able to bring in Interference No. 108,048 between the Broad Institute and the University of California ("University") over...more

3/24/2016 - DNA Interference Proceeding Patent Trial and Appeal Board Patents University of California

Sequenom Petitions for Certiorari

Sequenom filed its anticipated petition for certiorari today for Supreme Court review of the Federal Circuit's decision in Ariosa v. Sequenom. The petition advises the Court that it "should take this opportunity to provide...more

3/22/2016 - Biotechnology DNA Genetic Testing Myriad-Mayo Patent-Eligible Subject Matter Patents Petition for Writ of Certiorari Product of Nature Doctrine Sequenom

Will "Open Source" be the Future of Genetic Diagnostics?

One of the effective arguments made by the ACLU in the AMP v. Myriad case was that somehow permitting patents on genes implicated a patient's privacy right in her genetic material. This was also the theme of their public...more

3/21/2016 - ACLU AMP v Myriad BRCA Genetic Materials Patents Patient Privacy Rights

Amgen files Declaratory Judgment Action against Sandoz over NEULASTA® Biosimilar

Last Friday, Amgen filed a declaratory judgment action in the District Court for New Jersey against Sandoz, in the latest iteration of biosimilar litigation between the parties (see complaint). Amgen's and Sandoz's actions...more

3/8/2016 - aBLA Amgen Biosimilars BPCIA Declaratory Rulings FDA Patent Infringement Pharmaceutical Patents Sandoz

FTC Issues Report on ANDA Settlement Agreements

In January, the Federal Trade Commission issued a report on the terms of settlement agreements between branded and generic drug companies in ANDA litigation under the Hatch-Waxman Act, according to the provisions of the...more

3/1/2016 - ANDA Antitrust Litigation FTC FTC v Actavis Generic Drugs Hatch-Waxman Pay-For-Delay Pharmaceutical Industry Reverse Payment Settlement Agreements

Zika Virus Vector (Aedes aegypti): Genomic Sequence

The rise and spread of the Zika virus, although limited for now to South America, has raised concerns globally, particularly with the prospect of the Summer Olympics in Rio de Janeiro later this year. And with those concerns...more

2/26/2016 - DNA Genome Project Zika

Sandoz Petitions for Certiorari over 180-day Notice Provision in BPCIA

As reported on February 17, 2016 in IP Law360, Sandoz has petitioned the U.S. Supreme Court for certiorari to review the Federal Circuit's decision that reversed the District Court in Amgen v. Sandoz. In its decision, two...more

2/18/2016 - Biosimilars BPCIA eBay Test Injunctive Relief Notice Requirements Patent Litigation Petition for Writ of Certiorari Sandoz Sandoz v Amgen SCOTUS

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