Intellectual Property

For only the fourth time in its history, the Patent Trial and Appeal Board (“PTAB”) has granted a motion to amend in an inter partes review (“IPR”) proceeding, finding all substitute claims proposed by the patent owner patentable.

On June 12, 2015, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed the Northern District of California’s finding that the method claims in U.S. Patent 6,258,540 (‘540 patent) for detecting paternally-inherited cell-free fetal DNA (“cffDNA”) in maternal plasma or serum were invalid because these claims were not directed to patent eligible subject matter (Ariosa Diagnostics, Inc. v. Sequenom, Inc., No. 2014-1139, 2014-1144 (Fed. Cir., June 12, 2015)).

In a confluence of IP and antitrust law, a three judge panel for the D.C. Circuit recently affirmed a lower court decision upholding the Federal Trade Commission’s (“FTC”) 2013 modification of regulations under the Hart Scott Rodino (“HSR”) Act to require reporting of even partial transfers of pharmaceutical patent rights as an “asset acquisition” if all commercially significant rights are transferred.

On May 22, 2015, in a much-watched case, the Second Circuit upheld a preliminary injunction against Actavis PLC and its wholly owned subsidiary, Forest Laboratories, LLC (collectively “Actavis” or “Forest”), finding that Actavis’s “hard switch” strategy to launch an extended-release version of its blockbuster Alzheimer’s therapy and de-list the immediate-release version would likely violate Section 2 of the Sherman Act.

Yesterday, a Federal Circuit panel comprising Judges Newman, Lourie, and Chen heard oral argument in Amgen Inc. v. Sandoz Inc. (Fed. Cir. No. 2015-1499), the first ever case requiring the Appeals Court to address the meaning of various provisions of the Biologics Price Competition and Innovation Act (BPCIA).

On March 31 we posted about the Patent Office rolling out a series of rulemakings for improving post-grant proceedings, beginning with a first rule package of “quick fixes” this spring.

Welcome to the blog’s first post in a series about restriction requirements! This series will explore nuances in restriction requirement law and provide strategies for most effectively handling restriction requirements, both before and after they arise during prosecution of a U.S. patent.

Today the Patent Trial and Appeal Board (“Board”) posted on its website Revision 14 of its Standard Operating Procedure 1 (SOP 1). SOP 1 covers the assignment of Administrative Patent Judges to merits panels, interlocutory panels, and expanded panels in appeals, interferences, and AIA Reviews.

The Patent Trial and Appeal Board ("the Board") recently announced the addition of its March 26, 2015 decision in Dell, Inc. et al. v. Electronics and Telecomms. Res. Inst., IPR2015-00549 (“the ‘549 IPR”) to its online list of Representative Orders, Decisions, and Notices.

On May 6, 2015, the U.S. Department of Justice (“DOJ”) and U.S. Federal Trade Commission (“FTC”) submitted public comments to the U.S. Patent and Trademark Office (“PTO”) commending the PTO for its efforts to enhance patent quality and making specific recommendations on how the PTO may improve its processes.

The U.S. Patent and Trademark Office (USPTO) recently launched the Patent Application Alert Service (PAAS), a free electronic tool aimed to keep the public apprised of the publication of patent applications.

Have you seen John Oliver’s piece about abuses in the patent system? If not, take a look here. The ‘Last Week Tonight’ host has quite a bit of fun at the expense of the patent system.

Last Friday the Patent Trial and Appeal Board (PTAB) denied four Sandoz Inc. petitions for instituting inter partes review (IPR) of U.S. 8,455,524 (IPR2015-00005), U.S. 7,612,102 (IPR2015-00006), U.S. 7,659,290 (IPR2015-00007), and U.S. 7,659,291 B2 (IPR2015-00008) (referred to herein as the “EKR Patents”).

U.S. patent applicants often have an interest in expediting the patent examination process. The desire to speed examination can result from issues related to the availability of an inventor, possible infringing activity by a third party, business conditions or the advantageous nature of the technology that require a clear understanding of a stake holders patent rights, or other factors.

U.S. patent applications filed after March 16, 2013, when the “First-Inventor-to-File” portion of the America Invents Act (AIA) took effect, have started to be published.

The most hotly debated issue at this year’s GCR IP & Antitrust Conference, held on April 14 in Washington, DC, was the DOJ’s guidance issued in a February business review letter to the Institute of Electrical and Electronics Engineers (IEEE).

Tuesday, April 14, the House Judiciary Committee convened to discuss H.R. 9, the “Innovation Act,” which was introduced in February 2015 by the Committee’s Chairman, Rep. Bob Goodlatte (R-VA).

In a decision released on March 25, 2015, FDA denied a Citizen’s Petition that would have effectively made the information and patent exchange described in § 262 of the Biologics Price Competition and Innovation Act (“BPCIA”) a precondition for approval.

Under Secretary of Commerce for Intellectual Property and USPTO Director, Michelle Lee, announced on Friday that a series of actual and proposed rulemakings aimed at improving post-grant proceedings before the PTAB will be forthcoming—some effective immediately and others rolling out over the summer and beyond.

Fifty years ago, the Supreme Court held in Brulotte v. Thys Co., 379 U.S. 29 (1964) that a license agreement requiring royalty payments for use of a patented invention after expiration of the patent term is unlawful per se.