Chinta, Perdomo, Berks and Fratangelo LLP

Federal Circuit Issues Two § 156 Decisions

On Monday, May 10, 2010, the Federal Circuit issued two decisions dealing with 35 U.S.C. § 156 (patent term extension to compensate for regulatory delays). In Ortho-McNeil Pharmaceutical, Inc. v. Lupin Pharmaceuticals, Inc., No. 2009-1362 (Fed. Cir. 5/10/2010) (Judges Newman,...

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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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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 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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Zydus Not Infringing Lansoprazole ODT Particle Size Claim

Contact the author: Andrew Berks Takeda Pharm. Co. Ltd. v. Zydus Pharms. USA, Inc., No. 2013-1406 (Fed. Cir. 2/20/2014) This Hatch-Waxman case pertains to particle size claims for the brand name drug Prevacid® SoluTab™. The product is an orally dissolving tablet...

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Orion IP, LLC. v. Hyundai Motor Co.

U.S. Patent No. 5,367,627 is drawn to a computerized method for selecting parts, for example in an auto shop for selecting parts for repairs.  Orion IP, LLC v. Hyundai Motor Co., No. 2009-1130 (Fed. Cir. 5/17/2010). The patentee alleged that...

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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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New Dependent Claim is Proper Basis for Reissue Patent

The reissue procedure is prescribed by 35 U.S.C. § 251, which permits a patentee to seek a review of a granted patent on the grounds that the patent is inadvertently defective due to an error in conduct which was made in...

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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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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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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 often come with a hefty price tag down the...

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