Chinta, Perdomo, Berks and Fratangelo LLP

OFFENSIVE AND DEFENSIVE PATENTING AS A STRATEGIC OPTION TO PROTECT YOUR INVENTIONS

OFFENSIVE AND DEFENSIVE PATENTING AS A STRATEGIC OPTION TO PROTECT YOUR INVENTIONS A patent gives the patent owner the ability to exclude someone else from practicing the claimed invention, which can lead to market exclusivity if a product is within...

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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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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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Apotex loses IPR on Prodrug Obviousness (Institution Denied)

  Apotex Inc. v. Merck Sharpe & Dohme Corp., IPR2015-00419, Patent 5,691,336, Institution of IPR denied, 6/25/2015 Merck owns US patent 5691336, directed to tachykinin receptor antagonists. This patent is listed in the Orange Book as claiming the drug substance...

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Crowd Funding Boost? Crowd Funding Patent Invalidated by Kickstarter

Crowd Funding Patent Claims Abstract Ideas Judge Failla at the Southern District of New York agreed with Kickstarter that US Patent  7,885,887, claiming crowd funding, is invalid under §101. “The ‘887 Patent claims only the abstract and time-honored concept of patronage,...

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Obviousness upheld: Purdue Pharma Products L.P. v. Par Pharmaceutical, Inc.

No. 2009-1553 (Fed. Cir. 6/3/2010) (non precedential). Par filed an ANDA for once daily tramadol, with PIV cert’s against two patents.  Purdue sued, and Par counterclaimed that the patents were invalid under 35 U.S.C. § 112 for lack of enablement...

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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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Standing to sue: Alfred E. Mann Foundation for Scientific Research v. Cochlear Corp.

In Alfred E. Mann Foundation for Scientific Research v. Cochlear Corp., No. 2009-1447 (Fed. Cir. 5/14/2010) the issue was whether a patent licensor had standing to sue.  The Mann Foundation (AMF) licensed US 5609616 and US5938691, both pertaining to cochlear...

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Wyeth’s expansive claim construction results in finding of non-enablement

Contact the author: Andrew Berks Patents on rapamycin for restenosis held invalid for lack of enablement. Wyeth v. Abbott Laboratories, 720 F.3d 1380 (Fed. Cir. 2013). Wyeth sued defendants for patent infringement. Defendants counterclaimed that the patents were invalid as not enabled...

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Stanford v. Roche – When is an assignment not an assignment?

This case was a dispute over conflicting assignments by an inventor to Stanford and a private lab where he did supporting work. When infringement litigation erupted between the parties, the defendant asserted it was a co-owner so the plaintiff had...

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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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