News & Analysis as of

Patents Patent Expiration Patent Infringement

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Reexamination of Expired Patents

Takeaways - - Expired patents may be eligible for reexamination. - Owner’s options during reexamination of an expired patent are severely limited. Similar to reexamination practice, which has long allowed reexamination...more

White & Case LLP

Federal Circuit Limits the Application of Obviousness-Type Double Patenting for Patents in the Same Family

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On August 13, 2024, a three-judge panel of the Court of Appeals for the Federal Circuit issued a decision, authored by Judge Lourie, in Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 24-1061, which limits the...more

Dickinson Wright

Canadian Patent Infringement: The Role of Non-Infringing Options in Profit Calculations and the Availability of Springboard...

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The Supreme Court of Canada recently clarified the role of non-infringing options as well as springboard profits when calculating profits in patent infringement cases....more

Smart & Biggar

2020 Highlights in Canadian Life Sciences IP and Regulatory Law

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In 2020, Rx IP Update reported on a number of developments in Canadian life sciences IP and regulatory law. We review top developments below: Table of Contents 1. COVID-19: CIPO, Federal Courts, Health Canada 2. PMPRB:...more

Smart & Biggar

Action under amended PMNOC Regulations not rendered moot by patent expiry

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On May 22, 2020, the Federal Court held that an action under the amended Patented Medicines (Notice of Compliance) Regulations (PMNOC Regulations) relating to saxagliptin (ONGLYZA) would not be rendered moot by the relevant...more

Kramer Levin Naftalis & Frankel LLP

Biosimilar Litigation Trends and Lessons Learned in 2019

It has been nearly 10 years since the U.S. Biosimilars Pathway (the Biologics Price Competition and Innovation Act) was enacted. The first biosimilar product in U.S. history was approved and launched in 2015. Ten biosimilars...more

McDermott Will & Emery

Domestic Industry May Include Old Investments with Sufficient Nexus to Continuing Expenditures

Addressing orders entered by the International Trade Commission (ITC) against imported ATMs, the US Court of Appeals for the Federal Circuit held that expenditures up to 10 years before the complaint may be used to establish...more

Knobbe Martens

Federal Circuit Review - January 2019

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A Post-URAA Patent that Issues After but Expires Before a Related Pre-URAA Patent Is Not a Double-Patenting Reference Against the Pre-URAA Patent - In Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical Inc.,...more

McDermott Will & Emery

Obviousness-Type Double Patenting: It’s Complicated

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In two recent decisions, the US Court of Appeals for the Federal Circuit found that an asserted patent was not invalid due to obviousness-type double patenting (1) when a patent filed post-Uruguay Round Agreements Act of 1994...more

Hogan Lovells

EU: New developments in the SPC manufacturing waiver legislative process

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Following the European Commission’s draft proposal for implementing the so-called SPC manufacturing waiver the Committee on Legal Affairs of the European Parliament published a draft report on presenting its suggested...more

Knobbe Martens

Novartis AG v. Ezra Ventures LLC

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Federal Circuit Summary - Before Moore, Chen, and Hughes. Appeal from the United States District Court for the District of Delaware. Summary: Obviousness-type double patenting does not invalidate an otherwise validly...more

Dechert LLP

Recent Federal Circuit Decisions on Obviousness-Type Double Patenting May Shape Life Science Patent Portfolio Management

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The Federal Circuit recently decided two appeals, Novartis AG v. Ezra Ventures LLC (“Ezra”) and Novartis Pharms. Corp. v. Breckenridge Pharm. Inc. (“Breckenridge”) that both relate to the effect of obviousness-type double...more

Patterson Belknap Webb & Tyler LLP

Following Biosimilar Trial, Jury Awards Amgen $70 Million for Pfizer’s Pre-Approval Infringement of Now-Expired EPO Patent

In one of the first Biologics Price Competition and Innovation Act (BPCIA) litigations to reach trial, a jury on Friday awarded Amgen $70 million in damages for Pfizer’s infringement of one of Amgen’s expired patents...more

Akin Gump Strauss Hauer & Feld LLP

Finding of Exceptionality Leaves Unsuccessful Infringement Plaintiff Liable for Over $50 Million in Attorney Fees and Costs

Needless to say, a finding of exceptionality under 35 U.S.C. § 285 can have crippling consequences. Just ask Rembrandt Technologies, LP, which recently was slapped with an order to pay the prevailing defendants in a...more

McDonnell Boehnen Hulbert & Berghoff LLP

An Inflectra Update -- Pfizer Announces Launch of REMICADE® Biosimilar

On April 5, 2016, the FDA approved Celltrion's application to market a biosimilar to Janssen Biotech Inc.'s REMICADE® (infliximab) anti-TNF-a antibody (see "FDA Approves Inflectra - Celltrion's REMICADE® Biosimilar"). ...more

McDermott Will & Emery

PTAB Continues to Evolve Its Covered Business Method Patent Jurisprudence - International Internet Technologies, LLC and Red Rock...

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In two related decisions, the Patent Trial and Appeal Board (PTAB or Board) determined that patents directed to a personal computer interactive lottery/casino type game that allows players to purchase game tickets in the form...more

McDermott Will & Emery

Standing Requires the Transfer of All Substantial Rights, Regardless of Whether a Patent Is Expired - Keranos, LLC v. Silicon...

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Addressing whether an exclusive licensee of an expired patent had standing to sue for patent infringement, the U.S. Court of Appeals for the Federal Circuit confirmed that a licensee has standing when it holds all substantial...more

Fenwick & West LLP

U.S. Supreme Court Upholds Ban on Post-Patent Expiration Royalties

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Fifty years ago, in Brulotte v. Thys Co., the U.S. Supreme Court held that “a patentee’s use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se.” 379 U.S. 29, 32 (1964). On June...more

McDonnell Boehnen Hulbert & Berghoff LLP

Supreme Court Maintains Licensing Status Quo in Kimble v. Marvel Entertainment, LLC

A bedrock principle of U.S. patent law is that the patent grant comprises a quid pro quo. In exchange for a limited term of exclusivity (presently, twenty years from the earliest filing date), the patented invention is placed...more

Foley Hoag LLP

Patenting: A Guidebook For Patenting in a Post-America Invents Act World

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Patenting - Patenting generally offers a superior means for legally protecting most inventions, particularly since: • copyright, when available, does not provide a broad scope of protection; and • the...more

Foley & Lardner LLP

A Royalty By Any Other Name: Post-Expiration Payments After Kimble v. Marvel

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Patent holders and accused infringers will need to continue being creative in drafting license agreements after the Supreme Court’s recent decision in Kimble v. Marvel, No. 13-720, 2015 U.S. Dist. LEXIS 4067, at *6 (June 22,...more

Womble Bond Dickinson

Check Your Technology License: Payments May Be Unenforceable

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Expiration of a patent also terminates the rights to collect royalties on that patent – even if a license contract says otherwise. All businesses are reminded to check the termination date of any patent licensed to the...more

Eversheds Sutherland (US) LLP

The Finite Life of a Patent Upheld: No Royalties After Expiration

The U.S. Supreme Court, in a 6 to 3 ruling citing stare decisis, upheld the half-century rule against royalty payments accruing after expiration of a patent. The Court’s decision in Kimble v. Marvel Entertainment, LLC is a...more

Knobbe Martens

U.S. Supreme Court Confirms That Post Patent Expiration Royalties Are Prohibited

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Background of the Case - The dispute in Stephen Kimble v. Marvel Enterprises, Inc., Case No. 13-720, ___ U.S. ___ (2015), arose out of a 2001 settlement of a prior lawsuit between the parties. The prior suit had...more

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