Publications

July 5, 2019ArticleUpdate & Reminder: Patent Term Adjustment Related to IDS Safe HarborOn November 9, 2018, I wrote about the USPTO's release of interim procedures for patentees to request recalculation of the patent term adjustment with respect to information disclosure statements accompanied by a proper safe harbor statement under 37 CFR. 1.704(d) (http://www.lifesciencesipblog.com/?t=39&format=xml&A=18655&p=15972). More
June 17, 2019ArticleCommercial Success of Claimed Product over Non-Infringing Competitive Products as Evidence of Non-ObviousnessDuring litigation or contested proceeding the patentee can point to commercial success of a product as evidence of non-obviousness of the claimed product. Although some work is necessary to show the nexus between the success in the market and the claimed invention, the evidence showing, for example, the product taking sales from competitive products could help the patentee's case. More
June 14, 2019ArticleSOVEREIGN IMMUNITY AND IPR'S: AND NOW, THE REST OF THE STORYRadio great Paul Harvey would always leave listeners hanging during his broadcast, then return from a commercial with "the rest of the story". Previously, I wrote on the Federal Circuit ruling with respect to Tribal Immunity (https://www.oblon.com/publications/tribal-immunity-in-ipr-is-dealt-a-death-blow-by-the-federal-circuit). At the end of that article I stated: "I note, however, that in the final sentence of their analysis, the Federal Circuit explicitly stated that this decision did NOT address whether there is any reason to treat state sovereign immunity differently with respect to IPR proceedings. That will remain to be seen…" More
May 21, 2019ArticleWhat You Say Can Hurt YouOften in writing applications there is a tendency to denigrate prior art techniques. This is not risk free as the patentee in Nuvo Pharmaceuticals (Ireland) v. Dr. Reddy's Laboratories, Inc. (Fed. Cir. May 15, 2019) discovered. More
May 9, 2019 ArticlePTAB Issues Two New Precedential Opinions On Discretion to Deny Review - Implications for GenericsThe PTAB designated two decisions as precedential this week (in addition to several in previous weeks), both relevant to the Board's discretion to deny review. These cases illustrate that the PTO is in the process of designating precedential opinions on a number of issues, in line with revised Standard Operating Procedure 2 for designating precedential and informative decisions. See my previous posts on other recent precedential decisions here and here. More
March 19, 2019ArticleInvention by "Another": Duncan Parking Technologies, Inc. v. IPS Group, Inc., Appeal No. 2018-1205, -1360 (Fed. Cir. Jan. 31, 2019)IPS Group Inc. ("IPS") appealed from two decisions of the United States District Court for the Southern District of California granting summary judgment of non-infringement of U.S. Patents 8,595,054 and 7,854,310. Duncan Parking Technologies Inc. ("DPT") appealed from a related decision of the Patent Trial and Appeal Board ("the Board") in an inter partes review holding that claims 1–5 and 7–10 of the '310 patent were not shown to be unpatentable as anticipated under 35 U.S.C. § 102(e). More
March 12, 2019ArticleBiologic Patent Transparency Act - New Bill Aimed at BiologicsA bipartisan group of senators sponsored a bill this week—the Biologic Patent Transparency Act, S. 659—aimed at making patent information associated with biologics easier to identify and easing the approval process for biosimilar manufacturers encountering patent roadblocks. More
March 11, 2019ArticleMotions to Amend: Is the PTAB's Lectrosonics Order Just of Western Digital?Spring gardening season has begun and the USPTO is once again planting its Motion to Amend ("MTA") seeds. In a substantial redux of Western Digital Corporation v. Spex Technologies, IPR2018-00082, -00084, paper 13, the PTAB this past week designated paper 15 of Lectrosonics v. Zaxcom, IPR2018-01129, 01130("Lectrosonics Order") as an informative decision. More
February 27, 2019ArticleThe Federal Circuit Stays the Course in Patent Ineligibility for an Abstract IdeaIn a precedential opinion issued on February 26, 2019, the Federal Circuit affirmed the District Court's finding of patent ineligibility for a claim "directed to the abstract idea of "collecting, analyzing, manipulating, and displaying data."" University of Florida Research Foundation Inc. v General Electric Company et al (Fed. Cir. 2019). More
February 24, 2019ArticleNo More IPRs From Generic Drug Makers?The USPTO argues that a petitioner who has received a favorable final written decision in an IPR is estopped from reusing the same winning argument in a district court. More
January 28, 2019ArticleUSPTO's Patent Term Adjustment Policies Reigned in Yet AgainSince the Federal Circuit's decision in Wyeth v. Kappos, 591 F.3d 1364, 93 U.S.P.Q. 2d 1257 (Fed. Cir. 2010), aff'g, Wyeth v. Dudas, 580 F. Supp. 2d 138, 88 U.S.P.Q.2d 1538 (D.D.C. 2008), which held that the USPTO was improperly reducing patent term adjustment (PTA) by improperly calculating "overlapping" days of agency delay under 35 U.S.C. §154, the courts have been asked on numerous occasions to look at how the USPTO is calculating PTA. More