MCRO's Pyrrhic Victory

Attorney: Richard D. Kelly
May 21, 2020

On May 20 the Federal Circuit for the second time found McRO’s patent for automatically generating animations to be patentable, this time reversing the district court’s finding of invalidity for lack of enablement. In its previous decision, McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (McRO I), the Federal Circuit reversed the district court’s holding that the claims were directed to a judicial exception, an abstract idea. In McRo I the Court had reversed based on its determination that the claims were to a genus limited to rules with certain common characteristics, a genus. Id. at 1313. In particular, the “rules are limiting in that they define morph weight sets as a function of the timing of phoneme sub-sequences.” Id. <... Read more

Biogen v. Banner Life Sciences -- The Limited Scope Of U.S. Patent Term Extensions (Hint: Metabolites Not Included)

Attorney: Jeffrey B. McIntyre
May 12, 2020

Under 35 U.S.C. §156, a patentee can extend a patent’s term to restore part of the term consumed during the Food and Drug Administration’s (FDA) New Drug Application (NDA) approval process for a compound covered by the patent.<... Read more

CAFC Affirms Invalidation of Replacement Heart Valve Patent – Reiterates that Reasonable Expectation of Success is not Absolute Certainty for Success

Attorney: Grace Kim
May 08, 2020

           The Federal Circuit issued a public opinion in Boston Scientific Scimed, Inc., v. Andrei Iancu, No. 2018-2004 (Fed. Cir. May 6, 2020) (sealed opinion was previously issued on April 27, 2020), affirming the PTAB’s final written decision in IPR 2017-00060. The CAFC upheld that challenged claims 1-4 of U.S. Patent No. 8,992,608 to Boston Scientific are invalid as being obvious over prior art.<... Read more

CAFC Issues Another Precedential Decision on Standing

Attorney: Grace Kim
May 07, 2020

The Federal Circuit issued a precedential decision addressing standing requirements in Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp., No. 2018-2273, slip op. (Fed. Cir. April 23, 2020).<... Read more

USPTO Launches "IP Marketplace" Related to COVID-19

Attorney: Daniel J. Pereira, Ph.D.
May 6, 2020

The USPTO created a web-based platform that identifies patents that may be useful in the creation of technologies to combat the coronavirus/COVID-19 disease (https://developer.uspto.gov/ipmarketplace/search/patents). The website lists various patents and patent publications, seven pages with about 24 per page, that include links to the patents or publications, Issue/Publication dates and other bibliographic information. There is also a column indicating if Licensing is available for the patents/patent applications listed. The patents and applications listed have been apparently asked by the patentee/patent applicant to be included (from the tab “About the Platform):<... Read more

USPTO Decides an "Inventor" as a "Natural Person"

Attorney: Richard D. Kelly
April 28, 2020

The USPTO has published an apparently January 2020 Commissioner Decision effectively precluding the filing of patent applications where the invention was made solely by artificial Intelligence (AI). This decision has implications in the pharmaceutical industry where the use of AI to identify new compounds or uses for old compounds is utilizing AI. It also provides some guidance as to how the problem may be avoided.<... Read more

Obviousness of Compounds Having "Significant Structural and Functional Similarities" With Known Compounds

Attorney: Marina I. Miller, Ph.D.
April 27, 2020

Mylan Pharmaceuticals Inc. and others (“Mylan”) appealed from the District Court’s grant of summary judgment that claim 8 of U.S. Patent 8,552,025 owned by Valeant Pharm. Int’l, Inc.was not invalid. Valeant Pharm. Int’l, Inc. v. Mylan Pharm., Inc., No. 2:15-cv-08180 (SRC), 2018 WL 2023537 (D.N.J. May 1, 2018). The Court of Appeals for the Federal Circuit (“the Court”) reversed the decision of the district court.<... Read more

PTAB Issues Two New Precedential and One Informative Opinions on Section 325(d)

Attorney: Lisa M. Mandrusiak
April 17, 2020

The PTAB recently designated two decisions as precedential and one decision as informative with respect to 35 U.S.C. § 325(d). These cases discuss the Board's process for deciding when to use their discretion to deny institution because a Petition raises issues that the Patent Office previously considered in other proceedings (e.g., during prosecution, prior reexams).... Read more

"A Method of Preparation" and Patent Eligibility Under Section 101

Attorney: Marina I. Miller, Ph.D.
March 30, 2020

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.... Read more

Listing the Medical Device Part of a Combination Product in the Orange Book May Trigger Antitrust Liability

Attorney: Richard D. Kelly
March 30, 2020

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®.... Read more