Gibbons Law Alert

Gibbons Law Alert

Tagged: Patent

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.

Is Lear Still King?

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Posted in Patent

On November 13, 2012

In a recent decision, the Second Circuit crowned Lear, Inc. v. Adkins, 395 U.S. 653 (1969), but a petition to the Supreme Court has the possibility of dethroning this ruling and Lear. In Lear, the Court held that a licensee could challenge the validity of patents despite an agreement to the contrary. Contract law, the Court noted, must yield to the public’s interest in ensuring monopolies do not go unchecked. Lear, Inc., 395 U.S. at 670-71. Since that decision, courts have taken varied approaches to Lear. See, e.g., Licensee Patent Validity Challenges Following MedImmune: Implications for Patent Licensing,. 3 HASTINGS SCI. & TECH. L.J. 243-439 (2011).

Did You Submit an IDS During Reexamination? Does It Matter?

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Posted in Patent

On November 5, 2012

Earlier this month, the Federal Circuit in Belkin Int’l, Inc. v. Kappos, 2012-1090, published an important decision potentially limiting the scope of both ex-parte and inter-partes reexaminations. Traditionally during reexamination, practitioners submit information disclosure statements (IDS) to the Patent Office disclosing patents and printed publications with the understanding that the examiner would consider those references in relation to the claims subject to reexam. Very often, if the references were properly submitted, the examiner would record that the references were considered, but would not apply the references against the claims. The benefit to the patent owner is that this could create a heavy burden for subsequent defendants to show that the claims were invalid in view of this prior art. Belkin v. Kappos may change this practice and understanding.

USPTO Extends Deadline for Commenting on First Inventor to File Provisions of the AIA to November 5, 2012

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Posted in Patent / USPTO

On October 19, 2012

On July 26, 2012, the U.S. Patent & Trademark Office (USPTO) published a notice of proposed rulemaking and a notice of proposed examination guidelines to implement the first-inventor-to-file (FITF) provisions of the AIA effective March 16, 2013. The notices set an initial comment deadline date of October 5, 2012. In response to requests for additional time to submit comments, the USPTO recently extended the comment deadline date to November 5, 2012.

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