Chinta, Perdomo, Berks and Fratangelo LLP

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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Billups-Rothenberg – Another Biotech Patent Invalid for Lack of Written Description

In Billups-Rothenberg, Inc. v.  Assoc'd Regional Univ. Pathologists, Inc., No. 2010-1401 (Fed. Cir. 4/29/2011), U.S. Patent Nos. 5,674,681 (the ’681 patent) and 6,355,425 (the ’425 patent) describe genetic tests for Type I hereditary hemochromatosis, an iron disorder characterized by excessive iron absorption...

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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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Abbvie v. Janssen: Another nail in the coffin of functional claiming

Contact the author: Andrew Berks AbbVie Deutschland GmbH v. Janssen Biotech, Inc., No. 2013-1338 (Fed. Cir. 7/1/2014) This is a significant decision that extends the Federal Circuit’s holdings on written description from Ariad Pharms., Inc. v. Eli Lilly Co., 598 F.3d...

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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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Sloppy Claim Drafting Invalidates Teva Copaxone Claims

Teva Pharms. USA, Inc. v. Sandoz, Inc.,, No. 2012-1567 (Fed. Cir. 7/26/2013) (no reporter cite) (Rader, Moore, and Benson (sitting by designation from the District of Utah). Opinion by Moore. Teva sued Mylan and Sandoz for patent infringement of nine...

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YOU HAVE A BOOK DEAL OFFER – NOW WHAT?

YOU HAVE A BOOK DEAL OFFER - NOW WHAT? My clients have learned from their mistakes and currently understand the importance of having the advice of a qualified attorney prior to signing with a publisher. Because these mistakes or pitfalls...

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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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PTAB Obviousness Finding Reversed in Institut Pasteur GIIE Endonuclease Patents

Contact the author: Andrew Berks Inst. Pasteur v. Focarino, No. 2012-1485 (Fed. Cir. 12/30/2013) Three patents were at issue, US6610545, US6833252, and US7309605, all based on an application originally filed 5/6/1992 and expired on 5/6/2012. The patents disclose group I intron...

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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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Means-plus-function claims – indefinite because of insufficient structure in the specification

Contact the author: Andrew Berks Robert Bosch, LLC v. Snap-On, Inc., No. 2014-1040 (Fed. Cir. 10/14/2014). The Federal Circuit panel, (Prost, Taranto, and Hughes) outlines a two-step framework for determining if a claim invokes 35 U.S.C. § 112(f) (formerly (formerly 112 ¶ 6)....

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