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IPO Daily News™

Tuesday, 17 July 2018

17 July 2018

Federal Circuit Summaries Logo

* * PRIOR ART DID NOT INHERENTLY DISCLOSE COMPOSITION’S VEHICLE FORMULATION

Endo Pharms. Sols. v. Custopharm Inc., 17-1719 — On 13 July in an opinion by Judge CHEN, the Federal Circuit upheld a district court nonobviousness decision. Bayer’s patents claimed methods and compositions for treating low levels of testosterone via intramuscular injection, which Endo sold under the brand Aveed®. Custopharm argued that the composition’s 40% castor oil and 60% benzyl benzoate vehicle formulation was inherent in a prior art disclosure.

The Federal Circuit disagreed, finding that the vehicle formulation in the prior art was not disclosed and that Custopharm failed to show that a skilled artisan could have extrapolated the formulation from reference’s discussion of the composition’s pharmacokinetic performance. The prior art, which “was replete with potential cosolvents,” would not have caused a skilled artisan to home in on benzyl benzoate as a cosolvent or on the claimed ratio. Cases cited in support of Custopharm’s argument were unavailing because they “were about inherently present properties or characteristics for a ‘known’ prior art product.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo

* LIMITATION FROM EMBODIMENT SHOULD NOT HAVE BEEN READ INTO CLAIM

Blackbird Tech LLC v. ELB Elecs., Inc., 17-1703 — Yesterday in an opinion by Judge MOORE, a split Federal Circuit vacated a district court’s judgment of noninfringement. Blackbird’s patent was directed to energy efficient lighting apparatuses. The district court construed “attachment surface” as the “layer of the housing that is secured to the ballast cover” and Blackbird stipulated to noninfringement.

The Federal Circuit found that the claim did not require that the attachment surface be secured to anything other than the illumination surface. The district court improperly imported a limitation from an embodiment in the specification, describing a fastener that connected the ballast cover to the attachment surface, into the claim. “There is no suggestion in the specification or prosecution history that this fastener is important in any way that would merit reading it into [the claim].” Moreover, the limitation “was expressly eliminated during prosecution.” Judge REYNA dissented, finding that the intrinsic record supported the district court’s claim construction.
(1 to 4 stars rate impact of opinion on patent & trademark law)

Chat Channel Logo with TM

THIS WEEK ON IPO’S IP CHAT CHANNEL™: AN UPDATE ON THE ON-SALE BAR: HELSINN AT THE SUPREME COURT

Tune in to the IP Chat Channel™ on Thursday, 19 July 2:00p.m. ET to hear our panelists discuss the on-sale and public use bars in light of the U.S. Supreme Court grant of certiorari in Helsinn v. Teva last month. Our panel includes Supreme Court advocate JOHN DUFFY (University of Virginia), named one of the 25 most-influential people in IP law in the U.S. by The American Lawyer; in-house counsel JENNIFER JOHNSON (DuPont); and life sciences lawyer CHRISTOPHER LOH (Fitzpatrick, Cella, Harper & Scinto).

Helsinn should clarify the on-sale bar under the AIA. In this case, an anti-nausea drug patent was invalidated because a sale was partially made public more than a year before the filing date: the details of the invention were kept secret, but the existence of the sale was publicly disclosed. Helsinn followed two other significant Federal Circuit decisions in recent years on the on-sale and public use bars, Merck & CIE v. Watson Labs and The Medicines Co. v. Hospira. These decisions raise in-house concerns about patent prosecution practices, confidentiality, and guidance to commercial teams. The panelists will also consider what questions may remain unanswered after Helsinn, such as (1) does a fully-secret sale offer bar a patent under section 102? and (2) even if it serves as a bar to patentability under section 102, to what extent does a secret sale count as “prior art” for obviousness purposes? The panel will consider the Justices’ options in this case and how to proceed in the meantime.

IP Chat Channel™ webinars are recorded and available on our website after the live webinars. CLE granted in many states.

IP IN THE MASS MEDIA

IBM Sues Groupon on E-Commerce Patents

Yesterday Bloomberg reported that IBM Corp. sued Groupon Inc. for infringing four patents on e-commerce technology.

California Radio Station Owner Owes ASCAP $1.5 Million for Failure to Pay Music Licensing Fees

Last week Billboard reported that owner of three California radio stations EDWARD STOLZ was ordered to pay $1.5 million to the American Society of Composers, Authors and Publishers (ASCAP) after several ASCAP members sued for copyright infringement because Stolz failed to pay licensing fees for several years but continued to play their music.

CLAIRVOLEX TO SPONSOR IPO’S ANNUAL MEETING

The Hotel Room Key Cards at the 23-25 September 2018 IPO Annual Meeting in Chicago, Illinois, will be sponsored by Clairvolex.

Clairvolex Logo

Law & Advocacy

Friday, February 21, 2014

2014 USPTO BUDGET WILL ALLOW HIRING, SATELLITE OFFICES

During the quarterly meeting of the USPTO’s Patent Public Advisory Committee (PPAC), Chief Financial Officer TONY SCARDINO reported that the 2014 appropriations bill signed in January funds the USPTO at $3.024 billion – $90.8 million above the fiscal 2013 enacted level and $238.3 million above the fiscal 2013 sequestration level. The budget will allow the USPTO to hire 1,000 patent examiners and 63 administrative patent judges and provides funding related to opening satellite offices in San Jose, Denver, and Dallas. Projected 2014 spending is estimated at $2.948 billion. The White House will release its fiscal 2015 budget on March 4.


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