Chinta, Perdomo, Berks and Fratangelo LLP

THE HATCH-WAXMAN ACT (SIMPLY EXPLAINED)

THE HATCH-WAXMAN ACT (SIMPLY EXPLAINED) The Hatch-Waxman Act (formally known as the Drug Price Competition and Patent Term Restoration Act) is a law passed in 1984 that created the generic drug industry as we know it today in the United...

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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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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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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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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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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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Aspex Eyewear Inc. v. Clariti Eyewear, Inc.

In Aspex Eyewear Inc. v. Clariti Eyewear, Inc., No. 2009-1147 (Fed. Cir. 5/24/2010), Aspex sent Clariti several letters in 2003 alleging infringement of Aspex patents pertaining to eyewear. The last letter from Clariti was sent in June, 2003. Aspex then...

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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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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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You think your competitor’s patent is junk? Don’t tell it to the judge

Commentary by James P. Demers On May 26, 2015, the U.S. Supreme Court issued a decision in a patent case, Commil USA, LLC v. Cisco Systems, Inc., in which the Court held that a good faith belief that a patent...

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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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