Gibbons Law Alert

Gibbons Law Alert

Tagged: Patent

The Value Of Pharmaceutical Method Claims

by

Posted in Biotech / International Trade Commission / Patent / Pharmaceuticals

On October 13, 2011

The Federal Circuit’s Myriad Genetics decision, Ass’n for Molecular Pathology v. U.S. Patent and Trademark Office, 99 U.S.P.Q. 2d 1938 (Fed. Cir. 2011), which invalidated most of the method claims in the patents at issue, brings to mind a concern about the value of method claims, particularly to the pharmaceutical industry. The Myriad Genetics patents at issue included two types of method claims relating to human genetics: one involved determining whether a female patient had abnormal BRCA1/2 genes by comparison of BRCA1/2 gene and BRCA 1/2 RNA from the patient’s tumor sample to those from a non-tumor sample; the second was an activity screening method for anticancer drugs that compared the growth of a host cell transformed with a cancer-causing BRCA gene in the presence and absence, respectively, of the test compound.

Litigation Expenses Alone Insufficient to Satisfy “Domestic Industry” Requirement Says ITC and Federal Circuit Affirms

by

Posted in International Trade Commission / Patent

On October 10, 2011

Earlier this week the Federal Circuit affirmed an International Trade Commission (“ITC”) decision by refusing to find a patent owner complainant’s litigation expenses satisfied the “domestic industry” requirement of 19 U.S.C § 337. The Court’s decision in John Mezzalingua Assocs. (d/b/a PPC, Inc.) v. International Trade Comm’n, 2010-1536 (Fed. Cir. October 4, 2011) is a blow to ITC complainants, in particular, non-practicing entities intent on relying solely on patent litigation expenses to establish the domestic industry requirement of § 337.

A Recent Clarification on Intervening Rights by the Federal Circuit

by

Posted in Biotech / Patent / Pharmaceuticals

On September 28, 2011

The Federal Circuit recently found that intervening rights can apply to a claim that has been narrowed by argument only during a reexamination. In Marine Polymer Technologies, Inc. v. HemCon, the Federal Circuit recently found that narrowing a claim by argument only changes the substantive scope of the claim for purposes of intervening rights. Specifically, a claim term that is changed during reexamination without changing a word in the claim can still substantively narrow the scope of a claim. Therefore, upon reissue of the patent, an infringer would have “… absolute intervening rights with respect to products manufactured before the date of reissue.”

Twombly, Iqbal and Heightened Pleading Standards in Patent Infringement

by

Posted in Patent

On September 22, 2011

Two cases decided last month highlight the somewhat disparate pleading standards in patent infringement actions among districts after Twombly and Iqbal. In The Nielsen Co. v. comScore, Inc., a plaintiff in the Eastern District of Virginia overcame a motion to dismiss infringement claims. Case No. 11-cv-168 (E.D.Va. Aug. 19, 2011) (Davis, J.). The court held that the claims for direct infringement met the lenient pleading standard of Form 18 provided under the Federal Rules. While in Medsquire LLC v. Spring Med. Sys. Inc., the district court for the Central District of California granted the defendant’s motion to dismiss. 2-11-cv-04504 (C.D. Cal. August 31, 2011) (Nguyen, J.). The court held the plaintiff’s Form 18 pleading resulted in conclusory statements that failed to include any facts identifying the relevant aspect of the [accused product] that infringed the patents and the complaint was insufficient to meet the “plausibility” standard set forth in Twombly and Iqbal.

The Gibbons Institute of Law, Science & Technology presents “The 2011 Federal Circuit Year in Review”

by

Posted in Patent

On September 19, 2011

On October 3, The Gibbons Institute of Law, Science & Technology will host its annual “Federal Circuit Year in Review” event at Seton Hall Law School. Ralph A. Dengler, Counsel to the Gibbons Intellectual Property Department, along with a panel of practitioners and jurists, including Chief Judge Brown and District Judge Simandle of the District of New Jersey, will review and discuss the Federal Circuit’s key decisions from 2011, and their practical and future implications for the bar. These discussions will include cases involving damages; inequitable conduct; jurisdiction and venue; licensing; patentability of business methods; and preservation of ESI in anticipation of litigation, among other topics.

America Invents Act Introduces First-to-File to the United States

by

Posted in Patent

On September 14, 2011

On Thursday, September 8, 2011, the Senate passed the America Invents Act and President Obama is expected to sign the legislation this week. Every 2 years since 2005, Congress has taken up the issue of patent reform to address issues surrounding patent validity (e.g. first-to-file v. first-to-conceive; best mode), patent prosecution (e.g. opposition proceedings; inventor’s oath), and patent litigation (e.g. forum shopping, damages, willful infringement, patent unenforceability).

Patent Reform Act of 2011 on the Horizon

by

Posted in Biotech / Patent / Pharmaceuticals / USPTO

On September 7, 2011

On Tuesday, September 6, 2011, the Senate invoked cloture on H.R. 1249, also known as the America Invents Act, making it almost a done deal for passage of this Act. One reason that this bill has succeeded over its predecessors is that, with one major exception, there is little difference between the House and Senate versions. The passage of H.R. 1249 will mark the culmination of a 6-year process to pass patent reform legislation that started with H.R. 2795

Proper Patent Valuation is Critical in Today’s Market

by

Posted in Licensing / Patent

On August 19, 2011

$12.5 billion for 17,000 patents! $4.5 billion for 6,500 patents! These purchases by Google and a group spearheaded by Microsoft and Apple represent a shift in the value of respective patents. However, valuing patents is not a simple task, but requires proper attorney diligence to ensure the purchase of patents is done in an efficient manner as not all companies have the resources of Google and the Microsoft group.

Beware of Invention Promoter and Private IP Registration Service Scams

by

Posted in Patent

On August 9, 2011

While invention promoters and IP registration firms claim to assist present and future IP holders, some have been found to offer little or nothing of value in exchange for the thousands of dollars paid to them. Here are ways to investigate these firms and learn about your rights to avoid being treated unfairly. Invention Promoters: There are several resources available to help investigate and weed out unscrupulous invention promoters. The Federal Trade Commission offers a Consumer Alert listing the “sweet-sounding promises” of promoters that may do little or nothing in return for the fees they collect. Complaints regarding invention promoters can be filed with the FTC.

The Intellectual Property Exchange International: A Market for IP Assets?

by

Posted in Patent

On August 2, 2011

With the importance of Intellectual Property to a company’s bottom line, maximizing that value continues to command a prominent role. “Monetizing” an IP asset, such as a patent, is typically done by licensing, where the patent owner, or licensor, and the party wishing to use the patented technology, the prospective licensee, negotiate conditions and terms of use of the patented technology.

Connect:

About Gibbons

With 200 attorneys, Gibbons is a leading law firm in New Jersey, New York, Pennsylvania, Delaware, Washington, DC, and Florida, ranked among the nation’s top 200 by The American Lawyer. More…

Subscribe

Archived Blog Posts

Categories