Patent Docs

Does the Myriad Decision Presage a Golden Age of Patent-Free Personalized Medicine?

2013-06-19T23:43:42-05:00

By Kevin E. Noonan -- The Supreme Court's decision in the Myriad case has been almost universally hailed as being a great victory for patients, doctors, personalized medicine, and research. Precluding patenting for "merely" isolated human DNA, while permitting cDNA to be patent-eligible, is seen as being a rational compromise ("The Supreme Court got it exactly right," according to amicus Eric Lander of the Broad Institute) and no less a legal luminary than Nina Totenberg has said that the decision has "enormous implications for the future of personalized medicine and in many ways is likely to shape the future of...

SAP America, Inc. v. Versata Development Group, Inc. (P.T.A.B. 2013)

2013-06-18T23:53:16-05:00

By Michael Borella -- In an example of judicial reasoning rolling downhill, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) has struck down claims directed to a computer-implemented business method as failing to meet the requirements of 35 U.S.C. § 101. Applying the Supreme Court's test of Mayo v. Prometheus, and with a nod to the Federal Circuit's recent CLS Bank v. Alice decision, the PTAB panel found Versata's claims encompassing unpatentable abstract ideas, and lacking additional meaningful limitations that would thwart preemption of these ideas. Procedurally, this case followed an unusual path. In 2007, Versata...

IPO Webinar on FTC v. Actavis

2013-06-18T23:22:24-05:00

The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "Reverse Payments: Impact of U.S. Supreme Court on Hatch-Waxman Litigation" on June 20, 2013 beginning at 4:30 pm (ET). A panel consisting of Jeffery Cross of Freeborn & Peters; Albert Foer, president and founder of the American Antitrust Institute; and Lawrence Rosenberg of Jones Day will consider such questions as: • How will the "rule of reason" structure evolve in these cases? • What are the new rules for counseling generic companies considering launching a challenge? • Will the number of patent challenges by generic companies decline? •...

Federal Trade Commission v. Actavis, Inc. (2013)

2013-06-17T23:59:00-05:00

By Kevin E. Noonan -- The Supreme Court ruled 5-3 today in favor of the Federal Trade Commission in FTC v. Actavis, Inc. Writing for the majority that included Justices Kennedy, Ginsburg, Sotomayor and Kagan, Justice Breyer's opinion reversed the decision of the Eleventh Circuit Court of Appeals dismissing the FTC's complaint that a "reverse payment" settlement agreement between an innovator drug maker and generic challengers in ANDA litigation was anticompetitive and violated the antitrust laws. The Court refused to accept the FTC's position that such agreements are presumptively unlawful, holding that lower courts should apply an antitrust "rule of...

AMP v. Myriad: A Bad Day At Black Rock

2013-06-16T23:59:00-05:00

By Daniel Boehnen -- Last week, The Supremes once again stepped into an area of science/law where their limited knowledge of both fields will create more harm than good. The Supremes' say that the problem with isolated and purified DNA is that it is not chemically distinct from naturally occurring DNA, like cDNA, but persons of skill in the art recognize their reasoning is wrong. At a minimum, the bonding structure at the ends of the isolated and purified DNA have been inherently and unavoidably changed. Thus, the distinction between cDNA and purified and isolated DNA is a difference of...

The Supreme Court's Myriad Decision: Where Does It Leave the "Inventive Concept" Test?

2013-06-16T23:51:51-05:00

By Grantland Drutchas -- Perhaps one of the most intriguing issues coming out of the Supreme Court's Myriad decision is whether it leaves any room for the "inventive concept" test raised by earlier Supreme Court decisions, including Mayo v. Prometheus. Or is inventive concept merely limited to method claims? Compare the mental gymnastics that the Federal Circuit had to go through for the CLS Bank v. Alice decision. Where is any of that in this Supreme Court decision? For cDNA claims, Justice Thomas issued nothing more than the following terse statement: cDNA does not present the same obstacles to patentability...

Court Report

2013-06-16T23:32:04-05:00

By Sherri Oslick -- About Court Report: Each week we will report briefly on recently filed biotech and pharma cases. Fresenius Kabi USA, LLC v. Watson Laboratories Inc. et al. 1:13-cv-01015; filed June 6, 2013 in the District Court of Delaware • Plaintiff: Fresenius Kabi USA, LLC • Defendants: Watson Laboratories Inc.; Actavis Inc. Infringement of U.S. Patent Nos. 5,714,520 ("Propofol Compostion [sic] Containing Edetate," issued February 3, 1998), 5,731,355 ("Pharmaceutical Compositions of Propofol and Edetate," issued March 24, 1998), 5,731,356 ("Pharmaceutical Compositions of Propofol and Edetate," issued March 24, 1998) and 5,908,869 ("Propofol Composition Containing Edetate," issued June 1,...

Conference & CLE Calendar

2013-06-16T23:05:45-05:00

June 18, 2013 - Myriad: Implications of the U.S. Supreme Court Opinion (Intellectual Property Owners Association) - 2:00 to 3:00 pm (ET) June 25, 2013 - AIA Impact on Section 103 and Non-Obviousness: Navigating Timing Changes, Post-AIA Treatment of KSR, and Secondary Considerations to Meet Patent Validity Requirements (Strafford) - 1:00 - 2:30 pm (EDT) June 25-26, 2013 - Maximising Pharma Patents (C5 (UK)) - London, England June 26, 2013 - The Supreme Court Decision(s) in Myriad: What Did the Justices Say? What Does It Mean for Industry? (Foley & Lardner) - 12:00 to 1:15 pm (Eastern) July 1-2, 2013...

IPO Webinar on AMP v. Myriad

2013-06-14T23:22:10-05:00

The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "Myriad: Implications of the U.S. Supreme Court Opinion" on June 18, 2013 beginning at 2:00 pm (ET). A panel consisting of Gregory Castanias of Jones Day (who argued for Myriad at the Federal Circuit and before the U.S. Supreme Court); Patent Docs author Dr. Kevin Noonan of McDonnell Boehnen Hulbert & Berghoff; and Paul Golian, Assistant General Counsel at Bristol-Myers Squibb Company will consider such questions as: • How many and which existing gene patents will be challenged in post-grant proceedings at the USPTO? • Will holders of...

2013 TTS Europe

2013-06-14T23:16:53-05:00

TTS Ltd. and the Wellcome Trust will be holding its 2013 edition of TTS Europe on July 1-2, 2013 at the Welcome Trust in London, UK. The TTS Global Initiative is the leading international meeting for biotech sector Industry-academia licensing, partnering, and technology transfer. TTS Europe is not an IP Counsel meeting, but a multi-stakeholder meeting where IP and early-stage biotech are front and center and where Tech Transfer Officers and IP professionals discuss and debate issues, models, and strategy directly with other key stakeholders in early-stage biotech and bio-pharma innovation. A full program for TTS Europe, including an agenda...