Gibbons Law Alert

Gibbons Law Alert

Category: Patent

PTO Announces Software Partnership Roundtable Meetings

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Posted in Patent

On January 9, 2013

In an effort to “enhance the quality of software patents,” the United States Patent and Trademark Office (“PTO”) has announced a partnership with the software community. The Software Partnership will provide roundtable discussions between stakeholders and the PTO to share ideas and insights on software-related patents. The PTO will sponsor two roundtable events, one in Silicon Valley on February 12, and the other in New York City on February 27. In addition, the PTO plans to make each roundtable event available via Web cast, and will post Web cast information on its Internet Web site before the events.

AIA Technical Corrections Bill and Trade Secret Penalties Bill Await President’s Signature

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Posted in Patent

On January 4, 2013

As most Americans focused on the Congressional efforts to avoid the “fiscal cliff,” IP practitioners noted that Congress passed Senate-amended versions of a bill to amend the Smith-Leahy America Invents Act (AIA) (H.R. 6621) and a bill to increase penalties under the Economic Espionage Act (EEA)(H.R. 6029) on to the White House on January 1, 2013, for signature by President Obama. It is expected that President Obama will sign both bills into law shortly.

2013: The IP Law Year Ahead

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Posted in Patent

On December 31, 2012

Like 2012, 2013 promises to be a busy and significant year for intellectual property law. The Supreme Court is slated to decide a number of IP cases, including: Already, LLC d/b/a Yums v. Nike, Inc. (addressing the significance of a limited covenant-not-to-sue on declaratory judgment jurisdiction); Bowman v. Monsanto (determining whether the Federal Circuit erred by not finding patent exhaustion in second generation seeds and created an exception to patent exhaustion for self-replicating technologies); Gunn v. Minton (pertaining to whether federal courts have exclusive “arising under” jurisdiction when legal malpractice claims stem from a patent case); Kirtsaeng v. John Wiley & Sons, Inc. (regarding international copyright exhaustion, i.e., how Section 602(a)(1) and Section 109(a) of the Copyright Act apply to a copy that was legally acquired abroad and then imported into the United States); Federal Trade Comm’n v. Watson Pharm., Inc. (involving whether Hatch-Waxman reverse payment settlement agreements are legal); and most recently, Ass’n for Molecular Pathology v. Myriad Genetics, et al. (regarding the patentability of human genes and whether the petitioners have standing to challenge those patents).

DNJ Rejects Double-Patenting Claim

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Posted in Patent

On December 27, 2012

Last week, in Gilead Sciences, Inc. v. Natco Pharma Ltd., the District of New Jersey ruled on summary judgment that Gilead Sciences did not unlawfully extend its patent protection on oseltamivir (Tamiflu), a neuraminidase inhibitor used to treat the flu, covered by U.S. Patent No. 5,763,483 (“the ‘483 patent”). Natco Pharma sought to invalidate the ‘483 patent for obviousness-type double patenting in its attempt to market a generic version of Tamiflu prior to the patent’s expiration. Natco had alleged, inter alia, that the claims of the ‘483 patent were invalid due to obviousness-type double-patenting over Gilead’s later issued U.S. Patent No. 5,952,375 (“the ‘375 patent”).

Revisiting the America Invents Act

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Posted in Patent

On December 19, 2012

On November 30, 2012, Representative Lamar Smith introduced H.R. 6621 to “correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code.” The act seeks to provide a number of technical corrections to a variety of issues, including: eliminating a 9 month dead zone for inter partes review allowing inter partes reviews to be filed at any time for applications with an effective filing date before March 16, 2013; extending the time for filing the inventor’s oath or declaration until the payment of the issue fee; eliminating the prohibition on post grant review for reissue patents with narrowing amendments; clarifying the standards for initiating derivation proceedings; clarifying the calculation for patent term adjustment; and repealing 35 USC 373, which restricted the types of inventors or applicants that could file PCT applications at the U.S. Patent Office.

Supreme Court to Examine Pay-For-Delay Settlements

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Posted in Patent

On December 17, 2012

The battle between the pharmaceutical industry and the Federal Trade Commission (“FTC”) over so-called “pay-for-delay” settlements will finally be examined and decided by the Supreme Court. Last Friday, the Court granted certiorari in Federal Trade Commission v. Watson Pharmaceuticals, Inc., one of two cases with filed certiorari petitions involving Hatch Waxman reverse payment settlements. The petition in the other case, In re K-Dur Antitrust Litigation, is still pending.

Supreme Court Takes on Myriad

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Posted in Patent

On December 7, 2012

As anticipated, the Supreme Court has granted certiorari in Association for Molecular Pathology v. Myriad Genetics, et al. (the “Myriad” case) to review the Circuit Court’s opinion. The Court previously granted certiorari to vacate and remand the Federal Circuit’s Myriad decision for reconsideration in view of the Court’s 2012 decision in Mayo Collaborative Services, et al. v. Prometheus Laboratories, Inc. (“Mayo”). Notwithstanding Mayo, the Federal Circuit reached the same result on remand as its initial decision.

NJIPLA Pharmaceutical/Chemical Patent Practice Program

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Posted in Patent

On December 3, 2012

The 26th Annual New Jersey Intellectual Property Law Association (NJIPLA) Pharmaceutical/Chemical Patent Practice Update will feature the Honorable Faith S. Hochberg of the United States District Court for the District of New Jersey, who will provide a judge’s perspective on emerging issues under the AIA. The program will take place on December 5, 2012, from 12:00 – 5:15 p.m. at the Woodbridge Hilton in Iselin, New Jersey. The program offers 4.5 NJ and NY CLE credits, and 4.0 PA CLE credits, and will also provide a look at Already v. Nike, antitrust pitfalls in product improvements, and new issues regarding biotech patents.

Patent Litigators: Be Careful What You Plead, Part II

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Posted in Patent

On December 3, 2012

We previously reported on a sua sponte Memorandum Order where Senior U.S. District Court Judge Milton I. Shadur of the Northern District of Illinois took counsel to task for the quality of its answer and counterclaim. In New Paradigm Enterprises, Inc., d/b/a Q101 v. Merlin Media LLC, No. 12 C 5160, Slip Op. (N.D. Ill. Oct. 12, 2012), Judge Shadur again took issue with the pleadings. This time, the Court sua sponte found New Paradigm’s responses to Merlin Media’s answers, counterclaims and affirmative defenses to be “problematic.”

Kappos to Leave His Post, What Next . . .?

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Posted in Patent

On November 29, 2012

As practitioners learned, The United States Patent and Trademark Office (USPTO) has confirmed that Director David Kappos plans to retire from his post in January 2013 after nearly three and a half years of service to the USPTO. Kappos’ Tenure – Director Kappos was sworn in as Under Secretary of Commerce for Intellectual Property and Director of the USPTO on August 13, 2009. His tenure has been evidenced by major change both within the USPTO and through the enactment of the Leahy Smith America Invents Act (herein “AIA” or “Act”) impacting global patent practice.

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