Attorney:
Richard D. Kelly
September 8, 2022
As part of the USPTO’s effort to make drugs more affordable it is now publishing a list of PTE applications filed within the last five years by filing date as well as a listing all granted PTEs. This is the first time the USPTO has published a compilation of filed but not yet granted PTE applications. Previously the USPTO published a list of granted PTEs only. Previously the only way to discover if a PTE had been filed for a patent was to review the patent file history. This required that one first review the FDA Orange Book for patents listed for a newly approved drug and then search the USPTO application file records to determine if a PTE had been filed on one or more of the listed patents. The new list includes the drug name, patent number and PTE filing date; it also links directly to the application making review easy. Since a PTE application must be filed within 60 days of a drug’s approval the new listing will allow generic drug companies to determine the patent exclusivities quickly and easily for the new drug. A link to the PTE extension page is here. The page has two lists, one for PTEs filed in the last five years and one for all granted PTEs.<... Read more
Attorney:
Marina I. Miller, Ph.D.
September 6, 2022
Kamstrup A/S appealed a final written decision of the Patent Trial and Appeal Board (“the Board”). The Board found claims 1–15 of Kamstrup’s U.S. Patent No. 8,806,957 unpatentable as obvious or anticipated. On appeal, Kamstrup challenged the Board’s claim constructions. In addition, Kamstrup challenged the Board’s anticipation and obviousness determinations largely on the basis that the Board erred in rejecting Kamstrup’s claim construction arguments.<... Read more
Attorney:
Richard D. Kelly
August 18, 2022
On August 11, 2022, the Federal Circuit issued its opinion in the remand of Hologic, Inc. v Minerva Surgical, Inc. from the Supreme Court’s decision limiting the application of assignor estoppel to where the assignor is taking in litigation a position inconsistent with his prior representations in assigning the patent. In this case the issue was whether the issued claims are materially broader than the claims in the assigned application, Minerva Surgical, Inc. v. Hologic, Inc., 141 S. Ct. 2298, 2302, 2309 (2021). The Supreme Court in Minerva refused to discard the concept of assignor estoppel but instead held that the concept comes with limits and “reaches only as far as the equitable principle long understood to lie at its core.” The Supreme Court held that assignor estoppel “applies only when an inventor says one thing (explicitly or implicitly) in assigning a patent and the opposite in litigating against the patent’s owner.” Id. at 2304. Stated differently, where the assignor has not any explicit or implicit representations which conflict with an invalidity defense.<... Read more
August 16, 2022
In my first post about Pavo Solutions v. Kingston Technology a few weeks ago, I noted that the Federal Circuit rewrote claim language in the asserted patent by changing the claim element "for pivoting" from case to cover. The claim element in question read as follows:<... Read more
Attorneys:
Richard D. Kelly and Elissa Sanford
August 12, 2022
When it comes to IPR petitions filed in the Bio/Pharma space, USPTO data tells us that while Bio/Pharma petitions make up only 8% of the total petitions filed for the fiscal year of 2022 (through June 30, 2022), there is a high intuition rate for those Bio/Pharma petitions. According to USPTO statistics, 80% of the Bio/Pharma cases have been instituted so far this year. Put differently, 59 of the 74 petitions reviewed were subsequently granted.<... Read more
Attorney:
Richard D. Kelly
August 9, 2022
On July 11, Teva filed its petition for certiorari from the Federal Circuit’s second decision in its “skinny label” litigation with GSK, 7 F.4th 1320 (Fed, Cir. 2022). The petition makes many of the same arguments that Teva made before the Federal Circuit but the inconsistency of the Federal Circuit’s decision in GSK with three prior decisions standout. Its yet another example of the Federal Circuit’s lack of discipline in following its own precedent. While Teva rightly complains that the decision creates uncertainty around the skinny label provisions of 21 U.S.C. § 355(j)(2)(A)(viii), the real uncertainty is created by the Federal Circuit’s unfortunate habit of ignoring its own precedent upon which parties rely in making decisions.<... Read more
August 8, 2022
After discussing a court’s ability to rewrite patent claim language in view of the Federal Circuit’s decision in Pavo Solutions v. Kingston Technology (Pavo Solutions, Part I), my post last week noted that there was more to the story, including the issue of whether a court could rewrite a patent’s disclosure. Here are a few thoughts on that issue.<... Read more
August 3, 2022
In Pavo Solutions v. Kingston Technology (June 2022), the Federal Circuit rewrote claim language in the asserted patent by changing the claim element "for pivoting" from case to cover. The claim element in question read as follows:<... Read more
Attorney:
Derek Lightner, Ph.D.
August 2, 2022
On July 22, 2022, the Patent Trial and Appeal Board (PTAB) reversed an examiner’s assertion of obviousness in the case of Ex parte Jaeger (Appeal 2021-002641, USSN 15/559,117). The issue in Jaeger was whether the addition of known element to a prior art device was obvious where the combination was not consistent the purpose / operation of the prior art device.<... Read more
Attorney:
Richard D. Kelly
July 25, 2022
On July 18 the Federal Circuit in Cardex, Inc. v. Eurofins Viracor, Inc., affirmed the district court decision finding that diagnostic method claims directed to detecting organ transplant rejections in U.S.P.s 8,703,652 (‘652), 9,845,497 (‘497), and 10,329,607 (‘607) were not patent eligible. The following claim from ‘652 is representative of the claims on appeal, emphasis in the decision:<... Read more