Chinta, Perdomo, Berks and Fratangelo LLP

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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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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Why Should You Get a Patent?

An issue for many tech entrepreneurs is whether they should spend the resources (money and time) on getting a patent. Let me address the issues here why you should or should not get a patent. Before we even get to...

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Nautilus v. Biosig – The Supreme Court Clarifies the Clarity Requirement

Contact the author: Andrew Berks Nautilus, Inc. v. Biosig Instr.. Inc., No. 13-369 (S. Ct. 6/2/2014) Opinion by Ginsburg. The definiteness requirement, 35 U.S.C. §112(b) (AIA, effective 9/12/2012; previously §112 second para.) requires that a patent  “specification shall conclude with one or...

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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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ATTENTION DIGITAL AND BOARD GAME DEVELOPERS!

ATTENTION DIGITAL AND BOARD GAME DEVELOPERS! One area of practice that I particularly enjoy is helping game developers secure their intellectual property rights. The gaming industry is interesting from a legal perspective particularly because it involves the three main areas...

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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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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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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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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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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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