Publications

Specification Must Adequately Disclose the Claimed Invention to Avoid Invalidation for Lack of Written Description

Drs. Stephen Quake and Christina Fan ("Quake") appealed a decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board ("the Board") finding the four claims of Quake's U.S. Patent 8,008,018 and Claim 25 of their U.S. Application No. 12/393,833 unpatentable for lack of written description.

Patently Obvious?

Teddy Gron wrote an article entitled "Patently Obvious?" featured in the September issue of the Illinois State Bar Journal.

Illinois Bar Journal

Thinking Outside the (Utility Patent) Box – Don't Overlook Design Patent Protection in the Life Sciences

Design patents are very different from utility patents in that design patents only protect the ornamental features of an invention. In contrast to utility patents, the design is defined in scope by the content of the drawings rather than the words of a set of claims. Further, design patents have a 15 year term, as opposed to 20 years from filing for utility patents.

Non-Limiting Clauses and Written Description Based on Substantially Equivalent Disclosure

Nalpropion Pharmaceuticals, Inc. v Actavis Laboratories FL, Inc (Fed. Cir. Aug. 15, 2019) is a precedential opinion written by Judge Lourie with Judge Wallach and a dissent from Judge Prost in a case centered on an ANDA litigation in which Actavis sought approval for their generic version to Nalpropion's patents for the Contrave® product. Footnote 1 in the opinion outlines the rather complex history of the ownership/license interests as they changed over time.

Argument with Emphasis on "Particular" Combination of Salts Invoked Prosecution History Estoppel

"Tips for Safeguarding Your Products from Fakes"

Derek Mason was interviewed by Michael Keating for a blog post entitled "Tips for Safeguarding Your Products from Fakes," featured in Industrial Equipment News (IEN).

Industrial Equipment News

An Approach to Pharma Life Cycle Management

Every innovative pharma company faces the same challenge, how to delay the patent cliff. The existence of the "skinny viii" (21 U.S.C. § 355(j)(2)(A)(viii)) makes developing additional FDA approved indications unattractive from an LCM viewpoint.

Invalidity of Broad Claims for Lack of Enablement in the Absence of Sufficient Disclosure of the Structure/Function Correlation and Unpredictability in the Art

Enzo Life Sciences, Inc. ("Enzo") appealed the decision of the U.S. District Court for the District of Delaware granting summary judgment against Enzo and holding that the asserted claims were invalid for lack of enablement. The Federal Circuit affirmed.

USPTO Publishes its Second PTAB Trial Practice Guide Update

On July 16, 2019, the Patent Office published its 2019 Trial Practice Guide Update, a copy of which can be found here. This follows on the heels of last August's Trial Practice Guide Update (here) which, perhaps most importantly, provided patent owners with a sur-reply to petitioner's reply brief as a matter of right.

ATHENA DIAGNOSTICS - THE FEDERAL CIRCUIT AGAIN ABDICATES ITS RESPONSIBILITY

In denying the petition for rehearing en banc the majority of the Federal Circuit abdicated its responsibility to define the limits of the Supreme Court's Mayo decision. Judge Dyk on the 25th birthday of the Federal Circuit noted that: