Chinta, Perdomo, Berks and Fratangelo LLP

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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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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DEVELOPMENTS IN OBVIOUSNESS LAW AND HOW IT COULD AFFECT YOUR INVENTION

DEVELOPMENTS IN OBVIOUSNESS LAW AND HOW IT COULD AFFECT YOUR INVENTION In the recent Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc., No. 2017-2078 (Fed. Cir. Sept.10, 2018) decision, the Federal Circuit (the US appeals court for all patent cases) made...

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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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Ariad v. Lilly: Federal Circuit Upholds Separate Written Description and Enablement

In an en banc decision, the majority opinion of the Federal Circuit affirmed, in Ariad Pharms., Inc. v. Eli Lilly Co., that there are separate written description and enablement requirements in 35 U.S.C. § 112 first paragraph, and that the...

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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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Immunogen Antibody Conjugate Patent Survives IPR

  Phigenix, Inc. v. Immugen, Inc., IPR2014-00676 (PTAB 10/27/2015) This IPR involved US Patent 8,337,856, which claims antibody-toxin immunogates for the treatment of cancer. In a final written decision by the PTAB, the patent survives an IPR challenge from Phigenix. The...

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Defective Chain of Priority Results in Holding of Anticipation

Encyclopaedia Britannica v. Alpine Electronics of America, No. 2009-1544 (Fed. Cir. 6/18/2010).  Encylopedia Britannica (EB) owns the '018 and '437 patents, pertaining to multimedia database search system for retrieving textual and graphical information.  EB sued defendants Alpine Electronics and several...

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Centocor human antibody claims invalidated for lack of written description

Centocor Ortho Biotech Inc. v. Abbott Labs., No. 2010-1144 (Fed. Cir. 2/23/2011) (opinion by Prost). Centocor sued Abbott for patent infringement alleging that Abbott’s Humira® antibody infringes US Patent No. 7,070,775. The jury rejected Abbott's  defense that the asserted claims were invalid,...

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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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WHAT IS A WRITTEN DESCRIPTION IN A PATENT?

WHAT IS A WRITTEN DESCRIPTION IN A PATENT? A critical aspect in patent drafting is the “written description requirement” (35 USC §112(a)). This is a standard feature of all patent systems, which requires that claims be “supported” by the specification....

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