Judge Gaughan of the U.S. District Court for the Northern District of Ohio granted the defendant’s motion to dismiss after finding three Cleveland Clinic Foundation diagnostic patents invalid under 35 USC § 101. While the...more
On February 16, 2016, Sandoz, Inc. filed a petition for writ of certiorari to the Supreme Court, asking the Court to overturn the Federal Circuit decision that interpreted the “patent dance” provisions of the Biologics Price...more
2/19/2016
/ Amgen ,
Apotex ,
Biosimilars ,
BPCIA ,
Injunctive Relief ,
Patent Dance ,
Patent Litigation ,
Petition for Writ of Certiorari ,
Pre-Market Notification ,
Sandoz ,
Sandoz v Amgen ,
SCOTUS
In Lexmark International, Inc., v. Impression Products, Inc., the en banc Federal Circuit upheld a patent holder’s rights against exhaustion under two circumstances: (1) where the patent holder had sold a patented article...more
As reported previously, the Federal Circuit has denied rehearing in Ariosa Diagnostics, Inc. v. Sequenom, Inc. I wrote about Judge ‘Dyk’s opinion concurring in the denial but offering alternative views on patent eligibility...more
As noted in a previous article, the Federal Circuit has denied rehearing in Ariosa Diagnostics, Inc. v. Sequenom, Inc.. The per curiam order was accompanied by two separate concurring opinions, one authored by Judge Lourie...more
Colleagues in Australia have been spreading the bad news: The High Court of Australia followed the lead (?) of the U.S. Supreme Court and determined that Myriad cannot patent the isolated BRCA1 gene in Australia. Thanks to...more
10/9/2015
/ AMP v Myriad ,
Australia ,
Biotechnology ,
Chilling Effect ,
Genetic Materials ,
Innovation ,
Mayo v. Prometheus ,
Monopolization ,
Myriad ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Popular ,
Scope of the Claim ,
SCOTUS ,
USPTO
In a divided en banc decision in SCA Hygiene Products v. First Quality Baby Products, the Federal Circuit preserved the defense of laches for patent cases even though the Supreme Court eliminated that defense in copyright...more
9/23/2015
/ Copyright ,
Copyright Infringement ,
Corporate Counsel ,
En Banc Review ,
Equitable Estoppel ,
Equitable Relief ,
Ex Partes Reexamination ,
Injunctive Relief ,
Laches ,
Motion for Summary Judgment ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Royalties ,
Patents ,
Petition For Rehearing ,
Petrella v. MGM ,
SCOTUS ,
Statute of Limitations ,
The Copyright Act
In Dow Chemical Co. v. Nova Chemicals Corp., the Federal Circuit held claims reciting a limitation that could be calculated in several ways indefinite where the patent claims, specification, and prosecution history failed to...more
9/3/2015
/ Ambiguous ,
Dow Chemical ,
Indefiniteness ,
Nautilus Inc. v. Biosig Instruments ,
Patent Infringement ,
Patent Litigation ,
Patent Prosecution ,
Patents ,
Reasonable Certainty Standard ,
SCOTUS ,
Teva v Sandoz
In an en banc, per curiam decision in Akamai Technologies, Inc. v. Limelight Networks, Inc., on remand from the Supreme Court, the Federal Circuit broadened the circumstances under which a party can be liable for direct...more
8/21/2015
/ Akamai Technologies ,
Biotechnology ,
Direct Infringement ,
Divided Infringement ,
En Banc Review ,
Limelight v Akamai ,
Method Claims ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pharmaceutical Patents ,
Remand ,
SCOTUS
Sequenom, Inc. has filed a petition for rehearing en banc of the Federal Circuit decision that held its diagnostic method claims invalid under 35 USC § 101. (You can read my synopsis of that decision here). Stakeholders in...more
8/18/2015
/ En Banc Review ,
Mayo v. Prometheus ,
Myriad ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
SCOTUS ,
Section 101 ,
Sequenom
In its decision on remand from the Supreme Court, the Federal Circuit once again held the Biosig patent claims not indefinite, reversing the district court decision to the contrary. The decision came in Biosig Instruments,...more
On January 26, 2015, the Supreme Court granted certiorari, vacated, and remanded Shire Development LLC v. Watson Pharmaceuticals, Inc., to the Federal Circuit “for further consideration in light of Teva Pharmaceuticals USA,...more
1/30/2015
/ Certiorari ,
Claim Construction ,
Clear Error Standard ,
De Novo Standard of Review ,
Federal Rules of Civil Procedure ,
Patent Litigation ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Remand ,
SCOTUS ,
Shire Development v Watson ,
Teva v Sandoz ,
Vacated
On January 20, 2015, the Supreme Court issued its decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., finding that the Federal Rules of Civil Procedure call for some deference in the claim construction standard of...more
In a decision issued December 17, 2014, in In Re BRCA1- And BRCA2-Based Hereditary Cancer Test Patent Litigation (Myriad II), the Federal Circuit invalidated Myriad’s primer claims and detection method claims under 35 USC §...more
Well, 2014 was a busy year in patent law, and it wasn’t all good news for patent holders. The Supreme Court made 35 USC § 101 a significant hurdle to patenting inventions across a broad swath of technologies, gave more teeth...more
1/8/2015
/ Broadest Reasonable Interpretation Standard ,
CLS Bank v Alice Corp ,
Inter Partes Review (IPR) Proceeding ,
Interim Guidance ,
Limelight v Akamai ,
Nautilus Inc. v. Biosig Instruments ,
Patent Infringement ,
Patents ,
Post-Grant Review ,
SCOTUS ,
USPTO
The USPTO has asked for written comments on its patent subject matter eligibility guidance by July 31, 2014. In this article, I discuss why therapeutic method claims and method of manufacture claims should not be subject to...more
In a June 30, 2014 Federal Register notice, the USPTO requested public comments by July 31, 2014 on patent subject matter eligibility under the recent Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank...more
On June 19, 2014, the Supreme Court issued its decision in Alice Corp. v. CLS Bank International, finding that patents directed to “a computer-implemented scheme for mitigating ‘settlement risk’” were invalid as being drawn...more
On June 2, 2014, the Supreme Court issued a unanimous decision in Nautilus, Inc. v. Biosig Instruments, Inc., rejecting the Federal Circuit’s “insolubly ambiguous” test for patent claim indefiniteness under 35 USC § 112, and...more
On June 2, 2014, the Supreme Court issued a unanimous decision in Limelight Networks, Inc. v. Akamai Technologies, Inc., reversing the en banc Federal Circuit decision and holding that there can be no liability for induced...more
On May 9, 2014, the USPTO hosted a forum to receive public feedback on the patent subject matter eligibility guidance for examiners circulated on March 4, 2014. The USPTO heard formal presentations from ten speakers...more
According to an article on Law360, Bristol-Myers Squibb Co. is challenging the validity of two Genetic Technologies Ltd. patents on the basis that the claimed intron sequence analysis methods recite natural phenomena that do...more
In Medtronic, Inc. v. Mirowski Family Ventures, LLC, a unanimous Supreme Court held that the patent holder bears the burden of proving infringement, even in a declaratory judgment action brought by a licensee. In reaching its...more
On January 10, 2014, the U.S. Supreme Court granted certiorari in Nautilus Inc. v. Biosig Instruments, Inc., to review the legal standard for holding a patent claim invalid as indefinite, under 35 USC § 112, second paragraph....more
The hearing on Myriad’s motion for a preliminary injunction against Ambry Genetics is scheduled for September 11, 2013, before Judge Robert A. Shelby at the U.S. District Court for the Central District of Utah....more
9/9/2013
/ AMP v Myriad ,
DNA ,
Genetic Materials ,
Human Genes ,
Injunctions ,
Myriad ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Preliminary Injunctions ,
SCOTUS