The Federal Circuit dismissed an appeal from an unsuccessful challenger in an inter partes review (IPR) proceeding based on failure to satisfy the standing requirements for appeal in Allgenesis Biotherapeutics Inc. v....more
In its appeal from an adverse decision on priority by the Patent Trial and Appeal Board (PTAB) in Interference No. 106,115 (directed to CRISPR-mediated gene editing), Junior Party the University of California/Berkeley, the...more
The Federal Circuit issued three decisions on Monday relating to Eli Lilly & Co's. challenge in separate inter partes review proceedings on obviousness grounds of nine patents licensed by Teva Pharmaceuticals Int'l, with...more
Last week, the Federal Circuit affirmed a jury verdict against Baxalta Inc., Baxalta US Inc., and Nektar Therapeutics for infringing Bayer Healthcare's patent to human blood clotting factor conjugates in Bayer Healthcare LLC...more
A little less than four years ago, the Federal Circuit rendered a decision in Amgen Inc. v. Sanofi that brought clarity to how the Court (and U.S. Patent and Trademark Office) should apply the written description requirement...more
Indefiniteness under U.S. patent law is a failure to satisfy the statutory requirements of 35 U.S.C. § 112(b), which reads: "The specification shall conclude with one or more claims particularly pointing out and distinctly...more
Earlier this year, and almost one year to the day (January 17, 2019) that the Opposition Division (OD) of the European Patent Office revoked in its entirety European Patent No. EP 2771468, the Technical Board of Appeal...more
12/9/2020
/ Appeals ,
Bioengineering ,
CRISPR ,
EU ,
European Patent Office ,
Human Genes ,
Intellectual Property Protection ,
Paris Convention ,
Patent Applications ,
Patents ,
Priority Patent Claims ,
Revocation
Trial courts tend to get more than the benefit of the doubt when their decisions are viewed under the "abuse of discretion" standard, and juries similarly are affirmed unless there isn't substantial evidence supporting their...more
12/7/2020
/ Abuse of Discretion ,
Appeals ,
Claim Construction ,
Damages ,
JMOL ,
Judgment As A Matter Of Law ,
Motion For New Trial ,
Patent Infringement ,
Patent Litigation ,
Patent Prosecution History ,
Patents ,
Prior Art
Federal Circuit Refuses to Issue Stay in Mandate Pending Certiorari Decision -
One of the most interesting (albeit troubling) decisions by the Federal Circuit in the past year or so was its decisions, by a panel and then...more
At least some of the judges on the Federal Circuit have been reported to have voiced some frustration regarding the number of appeals of decisions by the Patent Trial and Appeal Board that are on the Court's docket,...more
On September 3rd, the Federal Circuit affirmed under Rule 36 the decision by the District Court of Nevada (Du, J.) in March that the claims asserted by Amarin Pharma against West-Ward Pharmaceuticals International Ltd., Hikma...more
9/5/2020
/ Amarin ,
Appeals ,
Generic Drugs ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Pharmaceutical Patents ,
Reaffirmation ,
Rule 36
One of the banes of any practicing patent attorney's professional existence is counseling clients on licensing agreements where the parties attempt to avoid setting forth definitive terms on contract provisions regarding...more
9/2/2020
/ Agreement To Agree ,
Appeals ,
Breach of Contract ,
Contract Negotiations ,
Contract Terms ,
Exclusive Licenses ,
Extrinsic Evidence ,
Genuine Issue of Material Fact ,
Injunctive Relief ,
IP License ,
Licensing Rights ,
Meeting of the Minds ,
Option Contracts ,
Patent Infringement ,
Patents ,
Plant Patents ,
Removal ,
Risk Management ,
Summary Judgment ,
Trademark Infringement
The Federal Circuit recently vacated a District Court decision by Federal Circuit Judge Dyk, sitting by designation, based on erroneous claim construction in Baxalta Inc. v. Genentech, Inc...more
The Federal Circuit's inchoate attempts to fashion a consistent, rational application of the Supreme Court's recent subject matter eligibility jurisprudence, while understandably Herculean in view of the difficulties inherent...more
8/26/2020
/ Abstract Ideas ,
Appeals ,
Claim Construction ,
Denial of Rehearing ,
Dissenting Opinions ,
Judges ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Product of Nature Doctrine ,
Reaffirmation ,
Section 101
ANDA litigation, pursuant to the Hatch-Waxman Act, has become more complicated over the years since enactment of the statute in 1984, with more patents being asserted and more parties participating over the opportunity to...more
8/24/2020
/ Abbreviated New Drug Application (ANDA) ,
Appeals ,
Generic Drugs ,
Hatch Act ,
Irreparable Harm ,
Likelihood of Success ,
Marketing Exclusivity Periods ,
Mylan Pharmaceuticals ,
Orange Book ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pay-For-Delay ,
Pharmaceutical Patents ,
Preliminary Injunctions ,
Takeda Pharmaceuticals
The Federal Circuit has spent the past few years applying the Supreme Court's most recent precedent, Nautilus, Inc. v. Biosig Instruments, Inc., on the indefiniteness standards in the patent statute. 35 U.S.C. § 112(b). The...more
8/14/2020
/ Appeals ,
Claim Construction ,
Extrinsic Evidence ,
Indefiniteness ,
Nautilus Inc. v. Biosig Instruments ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Pharmaceutical Patents ,
Popular ,
Reaffirmation
Ninth Circuit Overturns District Court Judge Lucy Koh's Decision That Qualcomm's Licensing and Chip Sales Practices Are Antitrust Violations -
The Federal Trade Commission has a history of taking positions and aggressively...more
8/14/2020
/ Anticompetitive Behavior ,
Antitrust Violations ,
Appeals ,
Cell Phones ,
Federal Trade Commission (FTC) ,
FTC Act ,
IP License ,
Microchip Technology ,
Monopolization ,
OEM ,
Patents ,
Preliminary Injunctions ,
Qualcomm ,
Restraint of Trade ,
Reversal ,
Section 5 ,
Sherman Act ,
Vacated
Federal Circuit (Again) Hands Down Revised Opinion in Response to Petition for Rehearing -
Recently the Federal Circuit has begun a practice of withdrawing an original opinion and handing down a substitute opinion in...more
8/11/2020
/ Abstract Ideas ,
Appeals ,
CLS Bank v Alice Corp ,
En Banc Review ,
Mayo v. Prometheus ,
Partial Reversal ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
Product of Nature Doctrine ,
Reaffirmation ,
Remand ,
Section 101 ,
Summary Judgment ,
Vacated
Federal Circuit Hands Down Modified Opinion in Illumina, Inc. v. Ariosa Diagnostics, Inc.
Earlier this year, the Federal Circuit (somewhat surprisingly) found claims of two Sequenom patents directed to methods for...more
8/6/2020
/ Appeals ,
Diagnostic Method ,
DNA ,
Life Sciences ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
Product of Nature Doctrine ,
Reversal ,
Section 101 ,
Treatment Method Patents
Last week, the Federal Circuit took the opportunity presented in an appeal from judgment on the pleadings in XY, LLC v. Trans Ova Genetics, LC to distinguish claims directed toward a patent-eligible invention from...more
8/4/2020
/ Abstract Ideas ,
Appeals ,
CLS Bank v Alice Corp ,
Judgment on the Pleadings ,
Patent Invalidity ,
Patent-Eligible Subject Matter ,
Patents ,
Popular ,
Remand ,
Reversal ,
Section 101
In a conundrum worthy of a law school civil procedure examination, plaintiff Gensetix found itself apparently with no remedy for infringement by Baylor College of Medicine, Diakonos Research Ltd., and William Decker of...more
7/29/2020
/ Appeals ,
Dismissals ,
Eleventh Amendment ,
Federal Rule 12(b)(1) ,
FRCP 19(a) ,
FRCP 19(b) ,
IP License ,
Joinder ,
Motion to Dismiss ,
Partial Reversal ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Reaffirmation ,
Remand ,
Remedies ,
Sovereign Immunity ,
State Universities ,
Treatment Method Patents
Last fall, the Federal Circuit decided in Arthrex, Inc. v. Smith & Nephew, Inc. that Administrative Patent Judges (APJs) serving on the Patent Trial and Appeal Board (PTAB) were principal officers and thus had been improperly...more
7/16/2020
/ Administrative Patent Judges ,
Appeals ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Director of the USPTO ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Petition for Writ of Certiorari ,
Principle Officers ,
SCOTUS ,
Split of Authority ,
USPTO
Arthrex recently filed a certiorari petition with the Supreme Court in Arthrex v. Smith & Nephew Inc. (a case related to Arthrex, Inc. v. Smith & Nephew, Inc., which has also the subject of petitions from the U.S. government...more
7/16/2020
/ Administrative Patent Judges ,
America Invents Act ,
Appeals ,
Application of Intervening Laws ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Constitutional Challenges ,
Effective Filing Date ,
Fifth Amendment ,
Forfeiture ,
Inter Partes Review (IPR) Proceeding ,
Petition for Writ of Certiorari ,
Retroactive Application ,
SCOTUS ,
Split of Authority ,
Takings Clause
In a procedurally unusual decision (but one unsurprising in all other respects), the Federal Circuit on Monday affirmed a district court's denial of a temporary restraining order to keep off the market Amgen's biosimilar...more
The Federal Circuit held recently that the "all substantive rights" test, used heretofore to determine the identity of the "patentee" for purposes of satisfying 35 U.S.C. § 281, should be the standard for determining common...more
7/8/2020
/ Accord and Satisfaction ,
All Substantive Rights Test ,
Appeals ,
BPCIA ,
Common Ownership ,
Contract Terms ,
IP License ,
Obviousness ,
Obviousness-Type Double Patenting (ODP) ,
Patent Infringement ,
Patent Litigation ,
Patent Prosecution ,
Patent Royalties ,
Patent Validity ,
Patents ,
Standard of Review ,
Transfer of Rights ,
Written Descriptions