Chinta, Perdomo, Berks and Fratangelo LLP

Prosecution Laches as Defense to Infringement — Cancer Res. Tech. Ltd. v. Barr Labs., Inc.

Prosecution laches is an equitable defense to a charge of patent infringement. Symbol Techs., Inc. v. Lemelson Med., 277 F.3d 1361, 1366 (Fed. Cir. 2002).  The doctrine “may render a patent unenforceable when it has issued only after an unreasonable...

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Vizio, Inc. v. ITC

No. 2009-1386 (Fed. Cir. 5/26/2010).  Funai owns the '974 patent that improves "channel latency," a delay in digital TV decoders while data is received. Funai brought an action at the ITC alleging that defendants imported infringing TV's.  The ITC concluded...

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WHAT DOES IT TAKE TO GET A PATENT? PERSEVERANCE IS A KEY INGREDIENT

WHAT DOES IT TAKE TO GET A PATENT? PERSEVERANCE IS A KEY INGREDIENT What does it take to get a patent issued? One ingredient that clients often struggle with is perseverance. The reality of getting an issued patent is that...

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Entecavir Obvious?

In this Hatch-Waxman case, Bristol-Myers Squibb, owner of the drug entecavir (sold as Baraclude®, indicated for hepatitis B (HBV) infection), sued Teva Pharmaceuticals for patent infringement. Teva responded that the patent (the only patent at issue was US5206244, priority date...

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Claim to breach of “have made” rights a federal question if enforcement is a question of patent infringement

In ABB Inc. v. Cooper Indus. LLC, No. 2010-1227 (Fed. Cir. 2/17/2010), ABB took a license to a group of Cooper patents pertaining to a vegetable oil-based dialectric fluid called “Biotemp.”  The license purported to contain a “have made” provision prohibiting...

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ATELVIA® Patents Obvious at District Court

Judge Hochberg Finds Actavis’ ATELVIA® Patents Obvious In a decision issued on March 4, 2015, Judge Faith Hochberg of the New Jersey District Court found two Warner Chilcott patents covering risedronate sodium delayed release tablets, US7645459 and US7645460, obvious in...

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Apotex Bid to Steal Mylan Exclusivity on Benicar

In this matter, Mylan is sitting on a likely 180-day exclusivity for being the first-to-file generic for Benicar®, olmesartan medoximil. Apotex has now initiated a declaratory judgment action attempting to trigger a forfeiture event for this product. If Apotex is successful, Mylan...

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Obviousness in view of references considered in examination – Tokai Corp. v. Easton Enterprises, Inc.

Tokai owned three patents at issue, pertaining to lighters with an elongated rod, useful for lighting barbecue grills.  Easton makes competitive products. Tokai sued Easton for patent infringement. The diputed feature was a safety device requiring the user to depress...

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Gilead v. Natco – Gilead’s patent invalid for obviousness-type double patenting

Contact the author: Andrew Berks Gilead Sciences, Inc. v. Natco Pharma Ltd., No. 2013-1418 (Fed. Cir. 4/22/2014) Gilead owns U.S. Patents 5,763,483 and 5,952,375, directed to antiviral compounds and their methods of use. The two patents have the same inventorship and...

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Means-Plus-Function Software Claims Must Have an Underlying Algorithm

All claims in EON's patent were found to be invalid because means-plus-function claims describing complex computer functionality are indefinite without algorithms to provide structure to the claims. Eon Corp. IP Holding LLC v. AT&T Mobility LLC, No. 2014-1392 (Fed. Cir. 5/6/2015). EON owns...

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Wellman, Inc. v. Eastman Chemical Co. – A Trade Secret Does Not Excuse Best Mode

Wellman lost a patent infringement claim on the grounds that it failed to disclose a specific preferred formulation known at the time the patent was filed, and also because it attempted to hold back part of the invention as a...

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