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Amgen Sues Coherus Under BPCIA After Completing Patent Dance

May 17, 2017 | Blog | By Thomas Wintner, Joe Rutkowski

On May 10, 2017, Amgen filed a complaint in the District of Delaware asserting that, under section 35 U.S.C. § 271(e)(2)(C)(i) of the Biologics Price Competition and Innovation Act (“BPCIA”), Coherus infringed Amgen’s U.S. Patent No. 8,273,707 (the “’707 patent”) by filing an abbreviated Biologic License Application (“aBLA”) for a biosimilar version of Amgen’s Neulasta (pegfilgrastim) product.
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Federal Circuit Expands Scope of Prosecution Disclaimer to IPR Proceedings

May 17, 2017 | Blog | By Andrew DeVoogd

In its opinion in Aylus Networks, Inc. v. Apple Inc., the Federal Circuit expanded the scope of prosecution disclaimer to statements made by a patent owner during Inter Partes Review (IPR) proceedings.
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USPTO eMod Project To Improve E- Filing/Managing Patent Applications

May 16, 2017 | Blog | By Christina Sperry

The U.S. Patent and Trademark Office (USPTO) is implementing eCommerce Modernization (eMod), as discussed at a Patent Quality Chat webinar on May 9, 2017.
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Federal Circuit Clarifies the On-Sale Bar under AIA

May 9, 2017 | Blog | By Brad M Scheller

Last week the Federal Circuit in Helsinn Healthcare v. Teva Pharmaceuticals clarified the scope of the on-sale bar rule under the America Invents Act (AIA).  The on-sale bar in general means that a sale or an offer to sale of an invention more than one year prior to the effective filing date of a patent qualifies as prior art.
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Federal Circuit Rejects Board’s Understanding of Prior Art

April 28, 2017 | Blog | By Brad M Scheller , Catherine Xu

The Federal Circuit has now reversed the Patent Trial and Appeal Board’s decision in Synopsys, Inc. v. ATopTech, Inc.  finding claims 1 and 32 of U.S. Patent No. 6,567,967 (the “‘967 patent”)  as being “not supported by substantial evidence.”
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Federal Circuit to PTAB: No Short Cuts Allowed

April 25, 2017 | Blog | By Brad M Scheller

Today, the Federal Circuit, vacated-in-part and remanded the Patent Trial and Appeal Board’s obviousness determination regarding a Securus Technologies patent directed to systems and methods for reviewing conversation data for certain events and bookmarking portions of the recording when something of interest is said, finding that the Board failed to provide any explanation for its decision with respect to certain challenged claims.
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Rules and Practice Tips Regarding Official Notice at the U.S. Patent and Trademark Office

April 21, 2017 | Blog

MPEP §2103(VI) states that when a rejection is imposed, the “Office action should clearly communicate the findings, conclusions and reasons which support them.”  Examiners commonly satisfy this requirement by citing one or more prior art references allegedly teaching each of the limitations of a claim.
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Fast Track Examination in the U.S. Patent and Trademark Office

April 19, 2017 | Blog | By William Geary

A variety of options are available to applicants to speed up patent application examination at the U.S. Patent and Trademark Office. 
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USPTO Launches PTAB Procedural Reform Initiative

April 18, 2017 | Blog | By Christina Sperry, Monique Winters Macek

On April 7, 2017, the U.S. Patent and Trademark Office (USPTO) announced it has launched an initiative to develop ways to improve Patent Trial and Appeal Board (PTAB) proceedings, particularly inter partes review proceedings. 
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Federal Circuit Limits Claim to Single Embodiment Because Only Enabling Description Provided in the Patent

April 12, 2017 | Blog | By Brad M Scheller , Anthony Faillaci

On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court’s judgment of infringement and summary judgment for non-infringement of The Medicines Company’s (“MedCo”) patents-in-suit.
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The Importance of Getting Inventorship Right: A Cautionary Tale in Two Cases

April 4, 2017 | Blog | By Ingrid A. Beattie, PhD

U.S. patent law elevates the importance of “the inventor” to an extent unseen in the rest of the world.  Unlike many other countries, ownership of patent applications in the United States initially vests in the inventors listed on the application.
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Why You Should Use the USPTO’s Automated Interview Request (AIR) Form

March 30, 2017 | Blog | By Lisa Adams

The U.S. Patent and Trademark Office (USPTO) has launched a new Automated Interview Request (AIR) Form that allows practitioners to submit an online request for an interview with an examiner.  The online form allows applicants to request an interview at any time without calling the examiner over the phone and leaving a message, which is a common practice now.
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Five things academic scientists should know when pursuing their first patent application – Part II of V

March 30, 2017 | Blog | By Ingrid A. Beattie, PhD

Authorship is the currency of academia, and principle investigators are often generous with technicians and collaborators when listing authors on a paper.  However, the identification of an “inventor” has legal significance in the U.S. and cannot be applied to those who have not made an inventive contribution. 
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Janssen v. Celltrion, Damages: “Patent Dance” May Determine Availability of Lost Profits

March 29, 2017 | Blog | By Thomas Wintner, Joe Rutkowski

On March 2, 2017, the United States District Court for the District of Massachusetts issued an order in Janssen v. Celltrion explaining that an accused patent infringer’s failure to fully engage in the Biologics Price Competition and Innovation Act (“BPCIA”) “patent dance” information exchange process may expose the biosimilar maker to eventual infringement damages in the form of lost profits, and preclude limiting damages to a reasonable royalty.
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Will 30 Years Of Practice Be Overturned? Supreme Court Hears Oral Argument In TC Heartland v. Kraft Foods.

March 29, 2017 | Blog | By Matthew Hurley, Serge Subach, Robert Moore

On Monday, March 27, 2017, the U.S. Supreme Court heard oral argument in TC Heartland v. Kraft Foods Group Brands LLC, a case that could have a profound impact on where patent infringement cases may be litigated.
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To Seek Design Protection or Not, That is the Question!

March 24, 2017 | Blog

While design patents are gaining wider attention—thanks in part to the highly-publicized litigation involving Samsung and Apple—they still remain an underutilized form of intellectual property (IP) protection. This blog discusses the benefits of design patent protection, and what is required to obtain a design patent.
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The U.S. Supreme Court Hears Oral Argument in Much Anticipated Patent Exhaustion Case

March 24, 2017 | Blog | By Andrew DeVoogd

On Tuesday, the U.S. Supreme Court heard oral argument in the highly anticipated case regarding the patent exhaustion doctrine, Lexmark Int’l, Inc. v. Impression Prods., Inc., No. 15-1189.
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Global Dossier Expanded To More Patent Applications Around the World

March 22, 2017 | Blog | By Christina Sperry

The U.S. Patent and Trademark Office (USPTO) announced this week that the Global Dossier program has expanded to include access to more patent applications worldwide.
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Supreme Court Shuts the Door on Patent Laches

March 21, 2017 | Blog | By Brad M Scheller

In a widely anticipated move with implications for patent litigation across the country, the Supreme Court ruled today that the equitable defense of laches is not available to limit damages in patent infringement cases subject to the six-year damages limitation of 35 U.S.C. § 286.
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Federal Circuit Invalidates Claim to Generating “Financial Risk” Reports

March 21, 2017 | Blog | By Michael Van Loy, Nicholas Mouton

In the recent decision of Clarilogic v. Formfree Holdings, the Federal Circuit invalidated the patentee’s (Formfree) claim to a “computer-implemented method for providing certified financial data indicating financial risk about an individual.” 
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