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IPO Daily News™

Thursday, 24 May 2018

24 May 2018

Federal Circuit Summaries Logo

* * AFFIRMANCE OF USPTO INVALIDITY DECISION MOOTED APPEAL OF DISTRICT COURT’S FINDING OF VALIDITY

XY, LLC v. Trans Ova Genetics, L.C., 16-2054 — Yesterday in an opinion by Judge CHEN, a split Federal Circuit held that collateral estoppel mooted Trans Ova’s appeal regarding the validity of XY’s claims. XY’s infringement claims involved several patents claiming devices and methods for sorting X- and Y- chromosome bearing sperm cells for use in animal breeding. Trans Ova appealed the district court’s decision that the patent that claimed methods of cryopreserving sperm was valid. The Federal Circuit said collateral estoppel rendered the appeal moot; it had concurrently affirmed a USPTO inter partes review decision that the claims were invalid, and “an affirmance of an invalidity finding, whether from a district court or the [USPTO], has a collateral estoppel effect on all pending or co-pending actions.” The fact that Trans Ova was not a part to the IPR was “of no consequence.”

Judge NEWMAN dissented, arguing that the majority’s holding of estoppel “based on a PTAB ruling in a separate case involving non-mutual parties” was contrary to the AIA and to general principles of estoppel. “We need understand no more than the different standards of validity in the PTAB and the district court, the different burdens of proof, and the different standards of appellate review in this court, to appreciate that inconsistent decisions can be reached in the PTAB and the district court, all weighing heavily against estoppel.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo

* COURT DID NOT ERR IN LEAD COMPOUND ANALYSIS

UCB, Inc. v. Accord Healthcare, Inc., 16-2610 — Yesterday in an opinion by Judge STOLL, a split Federal Circuit upheld a district court finding that UCB’s patent for lacosamide, an anticonvulsant sold under the brand Vimpat®, was valid. UCB had sued Accord and others in district court after they filed abbreviated new drug applications (ANDAs) seeking approval for generic versions. Accord argued that the district court erred by using a lead compound analysis when evaluating obviousness because the case involved purification, rather than structural modification, of a known compound.

The Federal Circuit said that it was “not aware of any authority holding that a lead compound analysis is or is not required in cases involving purifying mixtures.” However, even if a lead compound analysis was not required, the district court did not clearly err in finding that a skilled artisan would not have selected any of the compounds at issue as a lead compound. Chief Judge PROST dissented on other grounds.
(1 to 4 stars rate impact of opinion on patent & trademark law)

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IPO’S IP CHAT CHANNEL™ WEBINARS AVAILABLE ON DEMAND!

IP Chat Channel™ webinars are recorded and are available on our website as soon as 24 hours after the live webinars. Choose from over 120 recorded webinars in over 14 categories, including biotech/pharmaceutical; design patents; ethics; Federal Circuit and other appellate decisions; international legal department and law firm management; licensing; patent litigation; patent prosecution and PTO practice; post grant proceedings; standards and FRAND; trademarks/internet/copyright; trade secrets/employment; and transactions. Visit our website to register for upcoming and past webinars. Recorded webinars are eligible for CLE credit in some states. Organizations with an annual subscription to IPO’s IP Chat Channel™ receive unlimited access to all live and recorded webinars for all employees in their organization. Contact Clara Stanfield for more information about an annual subscription.

IP IN THE MASS MEDIA

Federal Judge Approves Spotify Settlement Agreement in Copyright Class Action

Yesterday the Hollywood Reporter reported that a federal judge approved Spotify’s settlement agreement to pay more than $112.55 million in cash and ongoing royalties to end a class action copyright infringement suit brought against it by artists who claimed that it had failed to pay for compulsory licenses of their song compositions.


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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