In what may be simple happenstance, the Federal Circuit issued opinions on the same day reversing a District Court grant of summary judgment in opinions written by Judge Lourie, here in BASF Corp. v. SNF Holding Co....more
4/13/2020
/ Anticipation ,
Appeals ,
Exploitation ,
IP License ,
Obviousness ,
On-Sale Bar ,
Patent Infringement ,
Patent Litigation ,
Patent Validity ,
Patents ,
Prior Art ,
Public Use ,
Reversal ,
Section 102 ,
Summary Judgment
Summary judgment, while clearly advantageous, requires that there be no disputed question of material fact and that the moving party is entitled to judgment as a matter of law. When a district court grants judgment...more
The Federal Circuit affirmed the Patent Trial and Appeal Board's (PTAB) claim construction (and inter partes review (IPR) decision invalidating claims for obviousness) in it recent Genentech, Inc. v. Iancu decision, and also...more
4/2/2020
/ Adverse Judgments ,
Appeals ,
Claim Amendments ,
Claim Construction ,
Genentech ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Obviousness ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Reaffirmation ,
Treatment Method Patents
The Federal Circuit continued its recent willingness to affirm findings of infringement under the doctrine of equivalents (see, e.g., "Eli Lilly & Co. v. Hospira, Inc. (Fed. Cir. 2019)"), in Galderma Laboratories, L.P. v....more
Ever since the Supreme Court's decision in Dickinson v. Zurko, patent applicants (and with the advent of inter partes review proceedings before the Patent Trial and Appeal Board, patentees) have found it difficult to overcome...more
3/30/2020
/ Appeals ,
Claim Construction ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Prior Art ,
Remand ,
Treatment Method Patents ,
Vacated
Patent law (and, consequently, patent lawyers) can be viewed as having at least a slightly tighter tether on concrete, factual reality than other areas of the law, at least to the extent that making patent-related legal...more
The Supreme Court on Monday affirmed the Fourth Circuit’s decision upholding State sovereign immunity against claims of copyright infringement.[i] The case arose over Petitioner Allen’s suit against North Carolina’s...more
3/27/2020
/ Abrogation ,
Allen v Cooper ,
Authors ,
Certiorari ,
Congressional Intent ,
Copyright ,
Copyright Infringement ,
Copyright Ownership ,
Copyright Remedy Clarification Act ,
Eleventh Amendment ,
Fourteenth Amendment ,
SCOTUS ,
Sovereign Immunity
On March 23, 2020, in a decision containing not a small amount of whimsy (more regarding that aspect anon), Justice Kagan, joined almost unanimously by her brethren, upheld a State's ( North Carolina) sovereign immunity...more
3/27/2020
/ Abrogation ,
Allen v Cooper ,
Authors ,
Certiorari ,
Congressional Intent ,
Copyright ,
Copyright Infringement ,
Copyright Ownership ,
Copyright Remedy Clarification Act ,
Fourteenth Amendment ,
SCOTUS ,
Sovereign Immunity
Mallinckrodt filed a certiorari petition with the Supreme Court last week, over the Federal Circuit panel decision (by Chief Judge Prost joined by Judge Dyk; Judge Newman dissented on the issue before the Court in this...more
Recently, the Federal Circuit has taken up issues relating to infringement under the doctrine of equivalents (DOE) and a related doctrine, prosecution history estoppel (PHE), that limits the scope of equivalents that can be...more
3/21/2020
/ Appeals ,
Doctrine of Equivalents ,
Eli Lilly ,
Hospira ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Petition for Writ of Certiorari ,
Pharmaceutical Patents ,
Prosecution History Estoppel ,
Tangential Relationship Test
The latest Federal Circuit decision on subject matter eligibility in the life sciences came down (by a divided court) in favor of eligibility, in Illumina, Inc. v. Ariosa Diagnostics, Inc. The claims at issue fell into the...more
3/20/2020
/ Appeals ,
CLS Bank v Alice Corp ,
Life Sciences ,
Mayo v. Prometheus ,
Myriad ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Pharmaceutical Patents ,
Popular ,
Product of Nature Doctrine ,
Reversal ,
Section 101
Two papers were filed with the PTAB in Interference No. 106,155 between Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology, and Junior Party the University of California,...more
The patent marking statute, codified at 35 U.S.C. § 287(a) appears straightforward:
Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing...more
2/26/2020
/ § 287 ,
Appeals ,
Burden of Proof ,
Component Parts Doctrine ,
Damages ,
Notice Requirements ,
Patent Infringement ,
Patent Litigation ,
Patent Marking ,
Patents ,
Remand ,
Vacated ,
Willful Infringement
On January 9th, Junior Party the University of California, Berkeley; the University of Vienna; and Emmanuelle Charpentier (collectively, "CVC") filed its motion in opposition to Senior Party the Broad Institute (joined by...more
The prevailing attitude in many quarters is that the Biologics Price Competition and Innovation Act (BPCIA) has not facilitated approval of drugs biosimilar to reference biologic drug products with sufficient alacrity and has...more
2/19/2020
/ Biologics ,
Biosimilars ,
BPCIA ,
Competition ,
EU ,
FDA Approval ,
Federal Trade Commission (FTC) ,
Food and Drug Administration (FDA) ,
Joint Statements ,
Legislative Agendas ,
Life Sciences ,
Pharmaceutical Industry ,
Prescription Drugs
There is a belief in some quarters that the most significant barrier to patent subject matter eligibility reform is an implacable opposition by companies in the high tech sector because those companies are convinced that the...more
2/19/2020
/ Biotechnology ,
CLS Bank v Alice Corp ,
Legislative Agendas ,
Mayo v. Prometheus ,
Myriad ,
Patent Infringement ,
Patent Reform ,
Patent Trolls ,
Patent-Eligible Subject Matter ,
Patents ,
Pharmaceutical Patents ,
SCOTUS ,
Technology Sector ,
Treatment Method Patents
Ever since the Supreme Court's decision in Mayo Collaborative Services v. Prometheus Laboratories was handed down in 2012, diagnostic method claims have been routinely invalidated by the district courts and those decisions...more
2/13/2020
/ Appeals ,
Diagnostic Method ,
Dissenting Opinions ,
Life Sciences ,
Mayo v. Prometheus ,
Patent Invalidity ,
Patent-Eligible Subject Matter ,
Patents ,
Pharmaceutical Patents ,
Product of Nature Doctrine ,
Section 101
On January 9th, Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, "CVC") filed a Motion in Opposition to Senior Party The Broad Institute, Harvard...more
2/11/2020
/ CRISPR ,
Evidence ,
Interference Claims ,
Life Sciences ,
Patent Litigation ,
Patent Oppositions ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Prior Art ,
Rebuttable Presumptions ,
Universities
Expert witness testimony is a frequent (almost ubiquitous) feature of patent litigation, if only because questions of the state of the art or the understanding of one having ordinary skill in the art are almost always at...more
2/10/2020
/ Abuse of Discretion ,
Admissible Evidence ,
Appeals ,
Claim Construction ,
Expert Witness ,
Eyewitness Testimony ,
Federal Rules of Evidence ,
Jury Trial ,
Motion For New Trial ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
State of the Art Defense ,
Summary Judgment ,
Unfair Prejudice ,
Witnesses
Continuing explication of the motions submitted on January 9th to the U.S. Patent and Trademark Office Patent Trial and Appeal Board in Interference No. 106155 between Senior Party The Broad Institute, Harvard University, and...more
One of the briefs filed on January 9th in Interference No. 106,115 between Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, "Broad") and Junior Party the...more
January 9th was a busy day at the Patent Trial and Appeal Board (PTAB). On that day no fewer than five substantive briefs were filed in Interference No. 106,115, two by Senior Party The Broad Institute, Harvard University,...more
Last January 17th, the Opposition Division (OD) of the European Patent Office revoked in its entirety European Patent No. EP 2771468, which named as Proprietors The Broad Institute, MIT, and Harvard College and had been...more
On January 15th, the U.S. and China announced bilateral approval of an agreement resolving some of the trade disputes between the two countries that have developed (or become more evident) over the past three years. One of...more
Last week, the Federal Circuit affirmed invalidation of claims to methods for reducing Protein A leaching in affinity column chromatographic methods important inter alia in purifying monoclonal antibodies, in Genentech, Inc....more