March 12, 2019 – ArticleBiologic 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, 2019 – ArticleMotions 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
March 4, 2019 – ArticleOnyx v. Cipla: Companies Beware - What Your Patent Agent Tells You May Not Be PrivilegedIn an order last month, the Delaware district court ruled that some communications involving Onyx's patent agent were not privileged and must be produced to Cipla. The court's order highlights potential pitfalls when relying upon advice solely from patent agents. More
February 27, 2019 – ArticleThe 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, 2019 – ArticleNo 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
February 11, 2019 – ArticleBioisosterism, by Itself, May Not be Sufficient Motivation to Modify a Lead CompoundIn the recent decision, Mylan Pharmaceuticals Inc. v. Research Corporation Technologies, Inc., the Federal Circuit affirmed the PTAB's finding that Claims 8 to 13 of U.S. Reissue Patent 38,551 ("the '551 patent") owned by Research Corporation Technologies, Inc. ("RCT") are not unpatentable. More
February 8, 2019 – ArticleFederal Circuit Finds a Diagnostic Method Ineligible Under Section 101In another diagnostic method dispute, the Federal Circuit found the asserted patent claims ineligible under 35 U.S.C. Section 101. More
January 28, 2019 – ArticleUSPTO'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
January 2, 2019 – ArticlePatents 4 Patients Extended Until June 30, 2020
December 12, 2018 – ArticleThe Federal Circuit Still Doesn't Get Diagnostic Claims
December 10, 2018 – ArticleWASHINGTON U. v. WARF - An Implied Covenant Wins the Day
December 3, 2018 – ArticleObviousness of a Dosage Regimen: Yeda Research and Development Co., Ltd. v. Mylan Pharmaceuticals Inc. Teva Pharmaceuticals USA, Inc. v. Sandoz Inc.
November 30, 2018 – ArticleHedge Your Bets in TC 1600 PGRs
November 20, 2018 – ArticleThe Internet of Medical Things (IoMT) in the World of Medical Devices
November 16, 2018 – ArticleAssignor Estoppel And IPR's: Possible Impact of Arista v. Cisco On Employment Agreements and Assignment AgreementsIn a November 9, 2018 decision (copy of decision linked below), the U.S. Court of Appeals for the Federal Circuit ruled that the doctrine of assignor estoppel does not apply in the inter partes review (IPR) context (see Arista Networks, Inc. v. Cisco Systems, Inc., (Fed. Cir. 2018)). More
November 9, 2018 – ArticleUSPTO Releases Interim Procedure for Requesting Recalculation of Patent Term Adjustment Related to the IDS Safe Harbor
November 8, 2018 – ArticlePTAB Confirms It Will Apply Broad Petitioner Estoppel Post-SAS
October 26, 2018 – BookIP Strategies for Medical Device Technologies: Be Your Own Incubator
October 25, 2018 – ArticleWRITTEN DESCRIPTION: Picking and Choosing and Blaze Marks
October 22, 2018 – ArticleTeva Challenges the FDA Over its First-Applicant Interpretation
October 12, 2018 – ArticleWill Rite-Hite Be Next?
October 10, 2018 – ArticleFinal Rule Change Replacing BRI with Phillips Standard
October 4, 2018 – ArticleTwo Herceptin Patents Survive IPR: A Lesson in Separately Arguing Motivation to Combine and Reasonable Expectation of Success
October 3, 2018 – ArticleTrustees of Boston University v. Everlight Electronics Co. (Fed. Cir. July 25, 2018): Specification Must Enable the Full Scope of the Claimed Invention
October 1, 2018 – ArticleHelsinn - The Government Sides with Reality
September 27, 2018 – ArticleTravatan Z Patent Survives IPR: A Lesson in Successfully Arguing Hindsight Bias
September 7, 2018 – ArticleJTEKT v. GKN: Federal Circuit Finds Competitor Lacks Standing to Appeal PTAB's Final Written Decision
September 7, 2018 – ArticleWHAT DOES AND/OR MEAN? IT DEPENDS
August 28, 2018 – ArticleRecent Pharmaceutical House and Senate Bills
August 20, 2018 – ArticleA Different Lesson from Vanda v. West-Ward
August 10, 2018 – ArticleBoston University v. Everlight: Claim Invalid For Lack Of Enablement Because 17% Was "Physically Impossible"
August 6, 2018 – ArticleWesternGeco - Impacts Lost Profits Beyond 35 U.S.C. 271(f) Infringement
August 1, 2018 – ArticleDistribution of Certain Materials to Groups of People Without Restriction May Render Such Materials Printed Publications Under § 102(b)
July 30, 2018 – ArticleEnforceability of Medical Procedure Patents Under 35 U.S.C. § 287(c)
July 26, 2018 – ArticleJazz v. Amneal: Public Accessibility of Prior Art v. Reasonable Pertinence of Analogous Art
July 26, 2018 – ArticleTribal Immunity in IPR is Dealt a Death Blow by The Federal Circuit
July 20, 2018 – ArticleThe Federal Circuit Lays Out What Does and Does Not Meet the Standard of Inherency, Motivation to Combine and Burden of Proof in Challenging Validity of Issued Claims
June 18, 2018 – ArticleDecs, Slides, and Video[tape]: Utilizing non-patent literature in IPR
June 11, 2018 – ArticleIs Real and Positive Change Coming for Patent Owners?
June 4, 2018 – ArticleEx Parte Jadran Bandic - Patent Eligibility Analysis After Berkheimer
June 4, 2018 – ArticleThe POPR and Expert Declarations
May 21, 2018 – ArticleSequenom v. Ariosa: The Saga Continues...
May 17, 2018 – ArticleAnacor Pharmaceuticals, Inc. v. Iancu
May 3, 2018 – ArticleUSPTO Webinar on Subject Matter Eligibility
May 2, 2018 – ArticleBiosimilars IPRs: Any Lessons From PTAB Institution Decisions On Coherus Petitions?
April 25, 2018 – ArticleJurisdiction for "Late Listed" Orange Book Patent and Injunction Based on Induced Infringement by Drug Label
April 23, 2018 – ArticleUSPTO Issues Memorandum and Publishes Fed Reg Notice for Comment Regarding 101 Eligibility
April 16, 2018 – ArticleFederal Circuit Rules in Favor of Patent Eligibility
April 13, 2018 – ArticleUsing Expert Testimony in Prosecution
April 9, 2018 – ArticleCan commercial success save your TC 1600 patent from IPR? Probably not.