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Rx IP Update - March 2017

Tribunal dismisses Eli Lilly’s NAFTA challenge on promise utility doctrine - As previously reported, Eli Lilly submitted claims to international arbitration under the North American Free Trade Agreement (NAFTA) seeking...more

DJI Releases Report on Lifesaving Drone Operations

DJI, market leader in drones and aerial systems, released a new report, “Lives Saved: A Survey of Drones in Action,” on lifesaving drone operations using data collected from around the world. DJI reports that drones have...more

Unsuccessfully Using the Wayback Machine to Establish Status as a Printed Publication

On March 6, 2017, the PTAB issued a pair of final written decisions upholding the patentability of U.S. Patent Nos. 7,932,268 (IPR2015-01836) and 8,618,135 (IPR2015-01835), in challenges filed by the Coalition for Affordable...more

Board Denies Kyle Bass Challenge Against Biogen’s Tecfidera® Patent In View of Unexpected Results

The PTAB issued a Final Written Decision finding that Biogen’s patent on treating Multiple Sclerosis (“MS”) with a certain dose amount was not obvious because the clinical efficacy exhibited by administering this dose amount...more

Maryland Sheriff’s Office Recovers Stolen Construction Goods Through Drones

Last week, Maryland’s Cecil County Sheriff’s Office used an unmanned aerial vehicle (UAV) to recover nearly $400,000 worth of stolen construction equipment, which also led to the arrest of the culprit. The New Jersey State...more

U.S. Patent Office Provides Additional Examples of Eligible Subject Matter

After the Supreme Court case of Alice v. CLS Bank in 2014, the Patent Office has issued a series of examination guidelines and examples to guide examiners and patent practitioners in determining patent eligible subject...more

Certain Medical Devices Exempted from 510(k) Requirements

The Food and Drug Administration (FDA) recently identified a list of Class II Medical Devices that, when finalized, will be exempt from premarket notification (510(k)) requirements. This publication was made by the FDA...more

PTAB Institutes Two IPRs in Hospira v. Genentech Avastin Dispute

Bevacizumab (Avastin®) is the subject of the widely watched “patent dance” dispute between Genentech and Amgen regarding Amgen’s proposed biosimilar. Hospira, however, (now owned by Pfizer) has chosen a different path in...more

Including Functional Claim Language Helped Save Pozen’s VIMOVO® Patents

On February 28, 2017, the PTAB held that the petitioner Lupin had not shown that the challenged claims in two of Pozen’s patents were invalid (IPR2015-01773 and IPR2015-01775).  These cases show the advantage of using...more

Federal Circuit Vacates PTAB Decision Based on Overly Broad Claim Constructions

In Los Angeles Biomedical Research Institute v. Eli Lilly and Co., No. 2016-1518, the Federal Circuit vacated the Patent Trial and Appeal Board’s determination of unpatentability in an inter partes review (IPR) proceeding,...more

Seven Key Questions in Understanding the Current Regulatory State of HCT/Ps

Despite regulations, litigation, and significant draft guidance, the future of regulation of HCT/Ps remains up in the air. Learn what you need to know quickly with these seven questions and answers....more

UAS, A Growing Part of the Oil and Gas Industry

As the use of unmanned aerial systems (UAS or as they are more commonly called, drones) continues to rapidly increase as technology continues to develop, more and more industries will utilize UAS in their day-to-day...more

AliceStorm Update February 2017

As many of my readers noticed, I didn't publish any of my own blogs in January and February. As it turned out, I suffered from a peculiar form of seasonal affective disorder (SAD), what I would call SMIAD: Subject Matter...more

In an IPR, the Burden of Persuasion in an Obviousness Challenge Never Shifts to Patentee

On March 3, 2017, in a final written decision in IPR2015-01838, the PTAB rejected an obviousness challenge brought by DuPont against a patent owned by Furanix Technologies B. V. directed to methods for preparing the known...more

New Amendments to SIPO's Guidelines for Patent Examination

The State Intellectual Property Office of China (“SIPO”) on March 1, 2017 finalized the amendment to its Guidelines for Examination; the amendments included patentability of business method patents, enhanced claiming options...more

The University of Pennsylvania Overcomes Kyle Bass’s Obviousness Challenge to Juxtapid® Patent Claims Using Commercial Success

The PTAB issued two final written decisions upholding The University of Pennsylvania’s claims to methods of treating high cholesterol based, in part, on commercial success and the meaning of a “printed publication” in...more

Northern District of California Finds Claims Directed to Device Pairing Patent Eligible

Is a patent directed to electronic communications between computing devices patent eligible? As with many legal questions, the answer to this question is not black and white. In the recent Fitbit, Inc. v. Aliphcom decision,...more

An Update on Part 107 Waivers for Night Operations

Back in August 2016, when the Federal Aviation Administration (FAA) announced its final small unmanned aerial systems (UAS) rule (or Part 107) FAA administrator, Michael Huerta said, “Our focus is to make this as streamlined...more

Swimming in dark pools

NZX has published its regulatory agenda for 2017 setting out its regulatory priorities and resourcing, and the outcomes it seeks to achieve over the coming year. In both the 2016 and 2017 regulatory agendas, NZX has flagged...more

Federal Circuit Review | February 2017

“Common Sense” Alone Is Not a Sufficient Motivation to Combine References - In In Re: Van Os, Appeal No. 2015-1975, the Federal Circuit held that the Patent Trial and Appeal Board’s reliance on intuition or common sense...more

Federal Circuit Vacates PTAB Claim Construction and Obviousness Conclusion in Eli Lilly’s IPR against LA BioMed

The Federal Circuit held that a rat study in a provisional application and a conversion method in an uncited reference did not support the claimed human dosage form in Los Angeles Biomed. Research Inst. v. Eli Lilly & Co.,...more

PTAB Denies Institution of IPR Proceedings Against Bayer’s Patent Covering STIVARGA®

On February 8, 2017, the PTAB denied Fustibal LLC’s (“Fustibal”) petition to institute inter partes review of U.S. Patent 8,637,553 B2 (“the ’553 patent”) owned by Bayer HealthCare LLC (“Bayer”) (IPR2016-01490). The 553...more

Preparing Biotech Patent Applications - Ten Strategies for Success

Obtaining issued patents in the biotechnology space can be a challenge. Here is a list of ten patent strategies we recommend for biotechnology innovators to increase their odds of obtaining valuable intellectual property...more

California Supreme Court Rules that Public Business Conducted on Personal Devices Result in Public Records

In a major development impacting all public entities subject to the California Public Records Act (Gov. Code § 6250 et seq., hereafter “CPRA”), on March 2, 2017, the California Supreme Court unanimously held that public...more

UPS Tests Drones for Autonomous Package Delivery

On February 20, 2017, UPS and Workhorse Group, an Ohio-based battery-electric truck and drone developer, successfully conducted a test that launched a drone from the top of a UPS truck, which then autonomously delivered a...more

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