On Monday, the Patent Trial and Appeal Board (PTAB) heard oral argument (remotely) from Senior Party the Broad Institute (and its partners as Senior Party, Harvard University and MIT) and Junior Party the University of...more
5/22/2020
/ CRISPR ,
DNA ,
Interference Proceeding ,
Issue Preclusion ,
Nonobvious ,
Obviousness ,
Oral Argument ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art
On April 22, 2020, the Federal Circuit "grappled," as the opinion put it, with the equitable doctrine of assignor estoppel in Hologic, Inc. v. Minerva Surgical, Inc., the Federal Circuit "grappled," as the opinion put it,...more
5/12/2020
/ Appeals ,
Apportionment ,
Assignor Estoppel ,
Damages ,
IP License ,
Obviousness ,
Parallel Proceedings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Unclean Hands
On March 23rd, Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, "Broad") filed its Reply to Junior Party the University of California/Berkeley, the University...more
The procedural niceties of the U.S. Patent and Trademark Office's implementation of the post-grant review features of the Leahy-Smith America Invents Act continue to be explicated in the Federal Circuit (and of course, the...more
4/15/2020
/ Adidas ,
Administrative Procedure Act ,
Appeals ,
Due Process ,
Motion to Amend ,
Nike ,
Notice and Comment ,
Obviousness ,
Patent Cancellation ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Reaffirmation ,
Reversal
In what may be simple happenstance, the Federal Circuit issued opinions on the same day reversing a District Court grant of summary judgment in opinions written by Judge Lourie, here in BASF Corp. v. SNF Holding Co....more
4/13/2020
/ Anticipation ,
Appeals ,
Exploitation ,
IP License ,
Obviousness ,
On-Sale Bar ,
Patent Infringement ,
Patent Litigation ,
Patent Validity ,
Patents ,
Prior Art ,
Public Use ,
Reversal ,
Section 102 ,
Summary Judgment
Summary judgment, while clearly advantageous, requires that there be no disputed question of material fact and that the moving party is entitled to judgment as a matter of law. When a district court grants judgment...more
The Federal Circuit affirmed the Patent Trial and Appeal Board's (PTAB) claim construction (and inter partes review (IPR) decision invalidating claims for obviousness) in it recent Genentech, Inc. v. Iancu decision, and also...more
4/2/2020
/ Adverse Judgments ,
Appeals ,
Claim Amendments ,
Claim Construction ,
Genentech ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Obviousness ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Reaffirmation ,
Treatment Method Patents
Ever since the Supreme Court's decision in Dickinson v. Zurko, patent applicants (and with the advent of inter partes review proceedings before the Patent Trial and Appeal Board, patentees) have found it difficult to overcome...more
3/30/2020
/ Appeals ,
Claim Construction ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Prior Art ,
Remand ,
Treatment Method Patents ,
Vacated
Expert witness testimony is a frequent (almost ubiquitous) feature of patent litigation, if only because questions of the state of the art or the understanding of one having ordinary skill in the art are almost always at...more
2/10/2020
/ Abuse of Discretion ,
Admissible Evidence ,
Appeals ,
Claim Construction ,
Expert Witness ,
Eyewitness Testimony ,
Federal Rules of Evidence ,
Jury Trial ,
Motion For New Trial ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
State of the Art Defense ,
Summary Judgment ,
Unfair Prejudice ,
Witnesses
Last week, the Federal Circuit affirmed a District Court decision (by Circuit Judge Bryson, sitting by designation) in an ANDA litigation, finding obvious claims asserted for treating patients having mild to moderate hepatic...more
Last week, the Federal Circuit overturned an obviousness determination in an inter partes review by the Patent Trial and Appeal Board in OSI Pharmaceuticals LLC v. Apotex Inc. The Court also reaffirmed its holdings in...more
The Federal Circuit applied the constitutional principle under Article III that there must be a case or controversy for a federal court to enter judgment (in this case, of invalidity) in ANDA litigation that can be vitiated...more
Last week, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) finding claims of U.S. Patent No. 7,064,197 to be invalid for anticipation or obviousness, in Enzo Life Sciences, Inc. v. Becton,...more
Last week, the Federal Circuit reversed findings of non-obviousness and affirmed (over Chief Judge Prost's dissent) a finding that claims asserted in ANDA litigation were not invalid for failure to satisfy the written...more
The Federal Circuit affirmed a determination by the Patent Trial and Appeal Board (PTAB) that two patents owned by Celgene Corp. were invalid in Celgene Corp. v. Peter decided last week. In rendering its decision, the Court...more
The interplay (or perhaps utilization) of inter partes review (IPR) in ANDA litigation was illustrated by the Federal Circuit in last month's Dr. Falk Pharma GmbH v. Generico, LLC nonprecedential decision....more
Last month, the Federal Circuit affirmed decisions from four separate trials in the District of Delaware involving seven different defendants regarding validity and infringement of patents directed to an opioid addiction...more
The doctrine of equivalents, a Supreme Court-created patent doctrine of vintage similar to inequitable conduct, arose in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950) (an uncharacteristically...more
There are provisions and interpretations of U.S. patent law that can be in tension depending on the circumstances under which they are argued, whether before an Examiner or during litigation. One of these is the dichotomy...more
The Federal Circuit exhibited the current status of its obviousness jurisprudence in affirming the District Court's determination that the asserted claims of U.S. Patent No. 8,410,131 were obvious in a decision handed down...more
Last Friday, May 3, 2019, the Federal Circuit affirmed a decision by the District Court that Defendants Actavis LLC and Teva Pharmaceuticals did not show by clear and convincing evidence that the claims asserted by Endo...more
One of the criticisms of the post-grant review proceedings instituted under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business method review) was the (relative) unavailability of...more
Earlier this month, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) that the claims of U.S. Reissue Patent No. RE38,551 challenged in inter partes review were not unpatentable for...more
On Friday, December 7th, the Federal Circuit handed down two opinions concerning the proper application of the judicially created doctrine of obviousness-type double patenting (OTDP). The first, Novartis AG v. Ezra Ventures...more
In Novartis AG v. Ezra Ventures LLC, the Federal Circuit addressed a narrow but important question regarding its jurisprudence on the issue of obviousness-type double patenting (OTPD). That question was whether its decision...more