Chinta, Perdomo, Berks and Fratangelo LLP

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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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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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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Donepezil: Teva has standing in declaratory judgement action that it doesn’t infringe listed patents

Teva Pharms. USA Inc. v. Eisai Co., Ltd., No. 2009-1593 (Fed. Cir. 10/6/2010). Ranbaxy was first-filer (pre-MMA) for donepezil of an ANDA with a "paragraph IV" certification, and Teva was a subsequent filer with a paragraph IV certification. Teva obtained...

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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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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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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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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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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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Claim to breach of “have made” rights a federal question if enforcement is a question of patent infringement

In ABB Inc. v. Cooper Indus. LLC, No. 2010-1227 (Fed. Cir. 2/17/2010), ABB took a license to a group of Cooper patents pertaining to a vegetable oil-based dialectric fluid called “Biotemp.”  The license purported to contain a “have made” provision prohibiting...

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