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 the issues, let’s define what is eligible for a patent: to get a patent you …
Category Archives: Blog
You Have A Book Deal Offer — Now What?
My clients have learned from their mistakes and currently understand the importance of having the advice of a qualified attorney prior to signing with a publisher. Because these mistakes or pitfalls often come with a hefty price tag down the line, in this article we share with our reader’s important negotiation points that are commonly …
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 of IP protection: trademarks, copyrights and patents. It is well established that games of chance …
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OFFENSIVE AND DEFENSIVE PATENTING AS A STRATEGIC OPTION TO PROTECT YOUR INVENTIONS
OFFENSIVE AND DEFENSIVE PATENTING AS A STRATEGIC OPTION TO PROTECT YOUR INVENTIONS A patent gives the patent owner the ability to exclude someone else from practicing the claimed invention, which can lead to market exclusivity if a product is within the scope of an issued patent claim. But an important strategic option could be a …
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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 States. The Hatch-Waxman Act was created in response to a court case called Roche Products, …
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. Shortfalls in meeting the written description requirement are common mistakes that can get inexperienced patent …
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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 a very harsh obviousness conclusion that may leave a big potential round of financing from …
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THE PROBLEM-SOLUTION APPROACH
THE PROBLEM-SOLUTION APPROACH Patent prosecution is one of my sharpest skills, and I just got word of an important patent allowance for one of my biotech cases. The beauty of receiving this notice was compounded by the strategy and approach to getting this case out the door with allowable subject matter. As my friends and …
WHY CHOOSE AN IP LITIGATOR?
WHY CHOOSE AN IP LITIGATOR? Many businesses have intellectual property such as patents, trademarks, or copyrights. In many cases, a time will come when you think someone is infringing those intellectual property rights. In other cases, you may receive a letter (or lawsuit papers) alleging you are infringing someone else’s patent, trademark, or copyright. For …
LIVE EVENTS: MANAGING RISK FOR SUCCESS
This video is being shared with the consent and permission of Mishu Music. Promoters of live events such as festivals and music performances have multiple aspects to coordinate before an event can successfully take place. Without a doubt, experienced promoters know that the support of legal counsel is crucial in every step of the way; …
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 it is often a struggle. For those caught in this trap — you should get …
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YOU HAVE A BOOK DEAL OFFER – NOW WHAT?
YOU HAVE A BOOK DEAL OFFER – NOW WHAT? My clients have learned from their mistakes and currently understand the importance of having the advice of a qualified attorney prior to signing with a publisher. Because these mistakes or pitfalls often come with a hefty price tag down the line, in this article we share …
Immunogen Antibody Conjugate Patent Survives IPR
Immunogen’s US Patent 8,337,856, which claims antibody-toxin immunogates for the treatment of cancer, survives an IPR challenge in a final written decision by the PTAB. In an unpredictable art, the Board finds that general statements in the prior art giving hints of future research were insufficient to provide a reasonable expectation of success.
Crowd Funding Boost? Crowd Funding Patent Invalidated by Kickstarter
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, and even the addition of an element of computer use is insufficient to render it valid under Section 101 of the Patent Act, 35 U.S.C. § 101.” Kickstarter’s motion for summary judgment is granted
Apotex loses IPR on Prodrug Obviousness (Institution Denied)
Petitioner Apotex asserted that claims directed to fosaprepitant were obvious, but the PTAB finds that there was no valid lead compound, so the patent is not obvious.
Means-Plus-Function Software Claims Must Have an Underlying Algorithm
EON’s patent with means-plus-function claiming describing complex computer functionality is indefinite because there are no algorithms to provide structure to the claims. When a patentee invokes means-plus-function claiming to recite a software function, it accedes to the reciprocal obligation of disclosing a sufficient algorithm as the corresponding structure.
Apotex Bid to Steal Mylan Exclusivity on Benicar
In this Hatch-Waxman action, Apotex is attempting to trigger a forfeiture event, that if successful, will cause Mylan to forfeit its 180-day exclusivity for a generic copy of Benicar®, olmesartan medoximil, that Mylan is otherwise eligible to receive.
ATELVIA® Patents Obvious at District Court
The court therefore found clear and convincing evidence that a person of ordinary skill at the time of the invention (in 2005) would have been motivated to use EDTA in the claimed amounts with a reasonable expectation of success.
In this Hatch-Waxman case, Bristol-Myers Squibb, owner of the drug entecavir (sold as Baraclude®, indicated for hepatitis B (HBV) infection), sued Teva Pharmaceuticals for patent infringement. Teva responded that the patent (the only patent at issue was US5206244, priority date 10/18/1990), which claims the chemical structure of entecavir, was obvious. The district court found in …
Megestrol Nanoparticle Formulation Claims – Not Inherently Obvious (at least not yet)
in an obviousness analysis, an inherency argument has a heightened standard that must be the natural result flowing from the operation as disclosed in prior art references.
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). The panel concludes the challenged claim invoked 35 U.S.C. § 112(f), i.e., the claim is …
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Abbvie v. Janssen: Another nail in the coffin of functional claiming
Contact the author: Andrew Berks AbbVie Deutschland GmbH v. Janssen Biotech, Inc., No. 2013-1338 (Fed. Cir. 7/1/2014) This is a significant decision that extends the Federal Circuit’s holdings on written description from Ariad Pharms., Inc. v. Eli Lilly Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc), and has important lessons for patent applicants seeking 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 more claims particularly pointing out and distinctly claiming the subject matter which the inventor or …
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Gilead v. Natco – Gilead’s patent invalid for obviousness-type double patenting
The panel concludes that looking to the earliest patent expiration for patents that are obvious variants “best fits and serves the purpose of the doctrine of double patenting.”
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 (ODT) containing lansoprzaole. Only claim 1 of US6328994 is in dispute, which reads, in relevant …
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PTAB Obviousness Finding Reversed in Institut Pasteur GIIE Endonuclease Patents
Contact the author: Andrew Berks Inst. Pasteur v. Focarino, No. 2012-1485 (Fed. Cir. 12/30/2013) Three patents were at issue, US6610545, US6833252, and US7309605, all based on an application originally filed 5/6/1992 and expired on 5/6/2012. The patents disclose group I intron encoded (GIIE) endonucleases. GIIE endonucleases are valuable research tools that are highly specific in selecting …
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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 and for lack of written description. The specification disclosed only one rapamycin species (sirolimus). The alleged …
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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 patents covering copolymer-1, marketed by Teva as “Copaxone®” for the treatment of multiple sclerosis. Copolymer-1 …
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Wellman, Inc. v. Eastman Chemical Co. – A Trade Secret Does Not Excuse Best Mode
Wellman lost a patent infringement claim on the grounds that it failed to disclose a specific preferred formulation known at the time the patent was filed, and also because it attempted to hold back part of the invention as a trade secret. Wellman, Inc. v. Eastman Chemical Co., No. 2010-1249 (Fed. Cir. 4/29/2011). Wellman had …
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Stanford v. Roche – When is an assignment not an assignment?
This case was a dispute over conflicting assignments by an inventor to Stanford and a private lab where he did supporting work. When infringement litigation erupted between the parties, the defendant asserted it was a co-owner so the plaintiff had no standing to sue. The underlying research was federally funded, and Stanford asserted that the …
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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 by the body. The defective gene in hemochromatosis is the High Fe (“HFE”) gene. The …
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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 the preparation and/or prosecution. The patent must be “wholly or partly inoperative or invalid by …
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