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

The Flip Side of Reasonable Expectation of Success is Unpredictability

Attorney: Daniel J. Pereira, Ph.D.
October 11, 2019

The Federal Circuit in a precedential opinion in Osai Pharmaceuticals, LLC v Apotex et al (Fed. Cir., October 4, 2019) reversed the USPTO's determination of obviousness in an IPR for patent claims directed to the treatment of non-small cell lung cancer (NSCLC). Just reading the background of the first three or four pages of the decision, it was already apparent that the Court was not going to be affirming the PTAB's decision. Notably:... Read more

Non-Limiting Clauses and Written Description Based on Substantially Equivalent Disclosure

Attorney: Daniel J. Pereira, Ph.D.
August 16, 2019

Nalpropion Pharmaceuticals, Inc. v Actavis Laboratories FL, Inc (Fed. Cir. Aug. 15, 2019) is a precedential opinion written by Judge Lourie with Judge Wallach and a dissent from Judge Prost in a case centered on an ANDA litigation in which Actavis sought approval for their generic version to Nalpropion's patents for the ContraveĀ® product. Footnote 1 in the opinion outlines the rather complex history of the ownership/license interests as they changed over time.... Read more

"Statutory" Obviousness-Type Double Patenting for Pharma Patents?

Attorney: Daniel J. Pereira, Ph.D.
June 20, 2019

As all patent practitioners know, obviousness-type double patenting is a judicially created doctrine to prevent the unjust extension of patent term of follow on patents that are simply obvious variants of earlier patents. The doctrine is applied during prosecution with the USPTO and can be used to challenge the validity of issued patents in contested matters. 35 USC 121 also speaks to this issue in certain circumstances.<... Read more

Pending Case, Cannabis Companies May Be Able to Prosecute Patent Infringements in Court

Attorney: Daniel J. Pereira, Ph.D.
May 22, 2019

In "United Cannabis v. Pure Hemp Collective," United Cannabis claims that Pure Hemp used a cannabis extract that United Cannabis had a patent on. Lawyers say this case is the first of its kind.... Read more

The Proper Application of the Supreme Court's Alice Standard is an Evolving and Sometimes Hazy Area of Law

Attorney: Daniel J. Pereira, Ph.D.
April 29, 2019

Marijuana, for medical purposes and recreational purposes, is an area of great political, social and legal interest. By some accounts (https://www.forbes.com/sites/thomaspellechia/2018/03/01/double-digit-billions-puts-north-america-in-the-worldwide-cannabis-market-lead/#6d925dd76510), the industry is rapidly growing leaps and bounds. Not surprisingly, patents and disputes centered on patents for this industry are increasing in numbers.... Read more

The Federal Circuit Stays the Course in Patent Ineligibility for an Abstract Idea

Attorney: Daniel J. Pereira, Ph.D.
February 27, 2019

In 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).... Read more

WRITTEN DESCRIPTION: Picking and Choosing and Blaze Marks

Attorney: Daniel J. Pereira, Ph.D.
October 25, 2018

In a non-precedential decision issued by the U.S. Court of Appeals for the Federal Circuit (FWP IP APS v. Biogen MA, Inc., October 24, 2018, http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-2109.Opinion.10-24-2018.pdf), the Court was tasked with reviewing a PTAB decision of an interference between the named parties.<... Read more

WHAT DOES AND/OR MEAN? IT DEPENDS

Attorney: Daniel J. Pereira, Ph.D.
September 7, 2018

In an interesting, but non-precedential, decision from the Court of Appeals for the Federal Circuit (Supernus Pharmaceuticals, Inc. v TWI Pharmaceuticals, Inc et al (Fed. Cir., September 6, 2018-http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-2513.Opinion.9-6-2018.pdf), the Court affirmed a decision from the U.S. District Court of New Jersey.... Read more

The 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

Attorney: Daniel J. Pereira, Ph.D.
July 20, 2018

Endo Pharmaceuticals Solutions, Inc et al v. Custopharm, Inc. (Fed. Cir. July 13, 2018), is an appeal of a Delaware District Court rejecting Custopharm's validity challenge to patents covering Endo's AveedĀ® testosterone undecanoate (TU) intramuscular injection as part of a Paragraph IV ANDA filing.... Read more