Kevin E. Noonan

Kevin E. Noonan

McDonnell Boehnen Hulbert & Berghoff LLP

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Rep. Goodlatte Releases Report on H.R. 9

Last week, Rep. Bob Goodlatte, Chairman of the House Judiciary Committee, released a 200-page Report on H.R. 9, "The innovation Act," introduced by Chairman Goodlatte with several co-sponsors earlier this year. The bill sets...more

8/5/2015 - America Invents Act Claim Construction Fee-Shifting Innovation Act OTDP Patent Infringement Patent Reform Patent Terms Patent Trial and Appeal Board Patent Trolls Patents Pending Legislation Pleading Standards Post-Grant Review USPTO

Biotech-specific Subject Matter Eligibility Materials Delayed

Pursuant to the Notice published in the Federal Register today, the U.S. Patent and Trademark Office provided additional materials related to the Office's interpretation of what does (and what does not) satisfy the subject...more

7/31/2015 - Biotechnology CLS Bank v Alice Corp Patent-Eligible Subject Matter Section 101 USPTO

New Update on Subject Matter Eligibility to be Published on July 30th

The U.S. Patent and Trademark Office will publish a Notice on July 30th that the Office is updating their procedures for determining subject matter eligibility. The update will contain three appendices.....more

7/30/2015 - Patent Examinations Patent-Eligible Subject Matter Patents USPTO

The Medicines Company v. Hospira (Fed. Cir. 2015)

There have been many voices raised in recent years against the patent system for a variety of political, policy, or personal reasons. Indeed, there is even a book entitled Don't File a Patent that sets out the authors'...more

7/15/2015 - ANDA Appeals Drug Manufacturers FDA FDA Approval Generic Drugs On-Sale Bar Patent Infringement Patent Invalidity Patent Litigation Patent Term Extensions Patents Pharmaceutical Manufacturers Pharmaceutical Patents Reversal USPTO

PTAB Decides Inter Partes Review of Patent at Issue in Ariosa v. Sequenom

On September 2nd, the Patent Trial and Appeals Board (PTAB) entered judgment in an inter partes review styled Ariosa Diagnostics v. Isis Innovation Ltd. (IPR 2012-00022). The Board found that Ariosa demonstrated, by a...more

9/16/2014 - Inter Partes Review Proceedings Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents USPTO

Apotex Inc. v. UCB, Inc. (Fed. Cir. 2014)

Last week, the Federal Circuit affirmed a finding of inequitable conduct in Apotex v. USB, a relatively rare occurrence in the years after the Federal Circuit's decision in Therasense v. Becton, Dickenson. In the Therasense...more

8/20/2014 - En Banc Review Inequitable Conduct Patent Litigation Patents Pharmaceutical Pharmaceutical Patents USPTO

How to Protect a Product of Nature

"The more things change . . ." is the beginning of an old saw, and that saying has particular relevance just days after the USPTO stopped accepted comments on its Subject Matter Eligibility Guidance. After all, this isn't...more

8/4/2014 - DNA Patent-Eligible Subject Matter Patents Roslin USPTO

In re Patel (Fed Cir 2014)

The Supreme Court has made a sport of reversing the Federal Circuit over the past decade or so, and other than reserved (and sometimes not so reserved) statements by members of the lower court, the Federal Circuit has...more

7/31/2014 - Alice Corporation CLS Bank CLS Bank v Alice Corp Patent Infringement Patent Litigation Patents SCOTUS USPTO

Continued Chaos in Obama Administration Patent Policy

President Obama has reportedly decided against nominating Johnson & Johnson executive Philip Johnson in the face of political pressure from the hi-tech industry and Members of Congress, including Senator Charles Schumer...more

7/10/2014 - Patent Reform Patents USPTO

Docs @ BIO: The Rest of the Story - Bloomberg BNA Hosts Panel on Subject Matter Eligibility

Last month at the BIO convention, Randy Kubetin, Managing Editor of Bloomberg BNA's Life Sciences Law & Industry Report moderated a panel entitled "Patent Eligibility from the Trenches: Practical Implications of the Supreme...more

7/9/2014 - AMP v Myriad Mayo v. Prometheus Myriad Patent Litigation Patent-Eligible Subject Matter Patents SCOTUS USPTO

Docs @ BIO: BNA Issues Report on PTO's Patent Eligibility Guidance

Sounding an appropriately alarmist note, the Bureau of National Affairs (BNA) Life Sciences Law and Industry Report issues the results of a study on how the U.S. Patent and Trademark Office is administering its March 4, 2014...more

7/1/2014 - AMP v Myriad Biotechnology Guidance Update Mayo v. Prometheus Patent-Eligible Subject Matter Patents Public Comment SCOTUS USPTO

In re Dinsmore (Fed. Cir. 2014) - Court Upholds PTO Determination That Reissue Cannot Cure Improper Terminal Disclaimer

Despite thirty years of efforts by the Federal Circuit to bring consistency and transparency to patent law (and the last dozen years of the Supreme Court's efforts to the contrary), in many respects patent law remains "full...more

6/11/2014 - Patent Applications Patent Infringement Patent Litigation Patents Reissue Patents USPTO

PTAB Grants First Motion for Leave to Amend in Inter Partes Review

Representatives from the U.S. Patent and Trademark Office, led by Janet Gongola, Senior Advisor to the Deputy Director of the U.S. Patent and Trademark Office, spent the better part of last month traversing the U.S....more

5/28/2014 - America Invents Act Inter Partes Review Proceedings Motion to Amend Patent Trial and Appeal Board Patents USPTO

Sherry Knowles Speaks Truth to the Power of the PTO on § 101 Guidelines

Last week, Sherry Knowles, former chief patent counsel for GlaxoSmithKline and now principal at Knowles Intellectual Property Strategies, LLC submitted to Managing Intellectual Property magazine a detailed critique of the...more

5/2/2014 - AMP v Myriad Biotechnology GlaxoSmithKline Mayo v. Prometheus Patent Litigation Patents Pharmaceutical SCOTUS Section 101 USPTO

Thoughts on the USPTO's Patent Eligibility Guidelines (and What to Do About Them)

The U.S. Patent and Trademark Office recently issued (without public notice or opportunity to comment) its interpretation of the standards for subject matter eligibility in view of the Supreme Court's recent decisions in Mayo...more

3/19/2014 - AMP v Myriad Mayo v. Prometheus Myriad Patent-Eligible Subject Matter Patents Pharmaceutical SCOTUS USPTO

Acting Director Rea to Leave U.S. Patent and Trademark Office

Acting Director Teresa Stanek Rea has notified her colleagues that she will be leaving the agency "in the near future." The text of her announcement reads as follows...more

9/13/2013 - Directors USPTO

BIO Urges Rehearing En Banc in Fresenius v. Baxter Int'l.

In a case that raises important issues of perhaps Constitutional dimensions (at least in Circuit Court Judge Newman's view), the Biotechnology Industry Organization (BIO) urged the Federal Circuit to rehear the panel decision...more

9/10/2013 - Biotechnology Fresenius Patent Infringement Patent Litigation Patents USPTO

Leo Pharmaceutical Products, Ltd. v. Rea (Fed. Cir. 2013)

The Federal Circuit's jurisprudence regarding obviousness as determined by the U.S. Patent and Trademark Office continues its post-KSR development in Leo Pharmaceutical Products, Ltd. v. Rea, which involves an obviousness...more

8/14/2013 - Inter Partes Reexamination Obviousness Patents Pharmaceutical Prescription Drugs USPTO

Ambry Responds to Myriad Lawsuit

Asserts Affirmative Defenses and Antitrust Counterclaims and Asks for Declaratory Judgment - On Monday Ambry filed its Answer to Myriad's complaint for patent infringement, and asserted patent misuse as an affirmative...more

8/8/2013 - Ambry AMP v Myriad Antitrust Litigation DNA Genetic Materials Human Genes Myriad Patent Infringement Patent-Eligible Subject Matter Patents SCOTUS Sherman Act The Clayton Act USPTO

In re Adler (Fed. Cir. 2013)

Ever since the Supreme Court handed down its decision in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), both the U.S. Patent and Trademark Office and the courts have found it easier to render a decision that a claimed...more

7/25/2013 - Biotechnology Inventions Patent Applications Patents SCOTUS USPTO

Coalition of University TTOs File Amicus Brief in Lighting Ballast Control LLC v. Philips Electronics North America Corp.

In his novel My Summer in a Garden (1870), Charles Dudley Warner famously said "Politics makes strange bedfellows." That aphorism is illustrated once again in the joining of the Public Patent Foundation with eight technology...more

7/9/2013 - Litigation Strategies Patent Infringement Patent Litigation Patents USPTO

U.S. Trade Representative Issues 2013 Special 301 Report

On May 1st, Acting U.S. Trade Representative (USTR) Demetrius Marantis issued the 2013 Special 301 Report. According to the USTR website, the Report "demonstrates U.S. resolve to take strong action to support critical jobs...more

5/31/2013 - ACTA Copyright Counterfeiting Piracy Special 301 Trade Secrets USPTO USTR

The Status Quo Reigns in Senate's Version of H.R. 6621

The Senate on Saturday passed an amended version (S. Amendment 3344) of H.R. 6621, Rep. Lamar Smith's bill "To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code." ...more

12/31/2012 - America Invents Act H.R. 6621 Patent Reform Patents Pre-GATT USPTO

Congressional Misunderstandings (Apparently) Motivate H.R. 6621

The House passed H.R. 6621 last night, on a vote of 308-89 (the roll call being demanded by Rep. Dana Rohrabacher over a request for a voice vote from the bill's sponsor, Rep. Lamar Smith). The substance of the substantive...more

12/20/2012 - Patents Pre-GATT USPTO

In re Ditto (Fed. Cir. 2012) - Cats and the Federal Circuit

Unlike dog breeds that tend to be of ancient vintage (Labra-doodles and Yorkie-poos to the contrary), many cat breeds are of relatively recent parentage. While there are many naturally occurring breeds (such as Maine Coons...more

12/12/2012 - Patent-Eligible Subject Matter Patents USPTO

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