Tribute to Honorable Gerald J. Mossinghoff by Oblon Partner Arthur Neustadt
Gerry would on a number of occasions confer with me concerning his expert witnessing. During our discussions, we would sometimes revert to our common experience many years ago of being young and ambitious patent attorneys long before the creation of the Federal Circuit, patent trolls, the America Invents Act and even before touch tone dialing, personal (rather than main frame) computers, mobile phones (which were not in the least small, convenient or "smart") and, of course, even before the difficult-to-imagine-as-not-being-present internet.
Oblon Team Practices Social Distancing – COVID 19 Update
In order to cooperate in the fight against COVID-19, Oblon has done its part and for the first time in the history of the company, a large portion of our staff and professionals are teleworking full-time with a small team working on-site. This has enabled us to take care of our employees and at the same time seamlessly support our clients. Together, while keeping our social distance, we will overcome this new challenge.
Listing the Medical Device Part of a Combination Product in the Orange Book May Trigger Antitrust Liability
A patent listing in the Orange Book provides the innovator drug company with a potent tool for excluding generic competitors who wish an ANDA application or 505(b)(2) drug approval applications relying upon the innovator's efficacy and safety data. If a patent is listed in the Orange Book the generic applicant must provide notice to the NDA holder and the patentee (if different) of the application's filing. The patentee then has 45 days to initiate litigation which would cause a 30-month stay of the FDA approval of the generic drug. Normally patents to a drug's packaging are not listable in the Orange Book, however, an exception exists for packaging which also functions as the drug's applicator. Sanofi took advantage of this provision to list U.S.P. 8,556,864 (‘864 patent) which was directed to the drive mechanism used in its injector pen for its Lantus® insulin product. The product plus injector was sold as Lantus Solostar®.
"A Method of Preparation" and Patent Eligibility Under Section 101
Before LOURIE, MOORE, and REYNA, Circuit Judges.
Illumina, Inc. and Sequenom, Inc. ("Illumina") filed suit against Ariosa Diagnostics, Inc., Roche Sequencing Solutions, Inc., and Roche Molecular Systems, Inc. ("Roche") alleging infringement of U.S. Patents 9,580,751 and 9,738,931. Roche moved for summary judgment that the asserted claims were invalid under 35 U.S.C. § 101. The district court granted Roche's motion holding that the claims of the '751 and '931 patents were directed to ineligible subject matter. Illumina appealed. The Federal Circuit ("the Court") reversed the district court's grant of summary judgment and remanded for further proceedings.
Oblon's Patent Prosecution practice and partners from the firm's Chemical, Electrical & Mechanical and Litigation practices have received top national rankings in the 2019 edition of IAM Patent 1000: The World's Leading Patent Professionals.