Intelectual Property Owners Association

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IPO Daily News™

Wednesday, April 23, 2014

* * * * LATER ISSUED, EARLIER EXPIRING PATENT QUALIFIED AS OBVIOUSNESS-TYPE DOUBLE PATENTING REFERENCE

Federal Circuit Summaries Logo* * * * LATER ISSUED, EARLIER EXPIRING PATENT QUALIFIED AS OBVIOUSNESS-TYPE DOUBLE PATENTING REFERENCE

Gilead Sciences, Inc. v. Natco Pharma Ltd. 13-1418 — On Tuesday in an opinion by Judge CHEN, a split Federal Circuit vacated a district court decision that Gilead’s ‘483 patent was not invalid. Gilead’s patents claimed antiviral compounds and methods. Natco argued the ’483 patent was invalid for obviousness-type double patenting over Gilead’s ‘375 patent, which listed the same inventors and included a similar written description to the ’483 patent, but claimed different priority. The district court decided the ’375 patent could not serve as a double patenting reference because it issued after the ’483 patent. The relevant dates were:

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The Federal Circuit held Gilead’s expiration dates controlled. Gilead’s later issued, earlier-expiring patent qualified as an obviousness-type double patenting reference. A terminal disclaimer could “preserve the validity of the later-expiring patent by aligning its expiration date with that of the earlier-expiring patent.” This would “most effectively enforce the fundamental right of the public to use the invention claimed in the earlier-expiring patent and all obvious modifications of it after that patent’s term expires.” Chief Judge RADER, dissenting, argued for “a more restrained approach.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo* * “A” DID NOT MEAN “AT LEAST ONE” IN PATENT CLAIM

Braintree Laboratories, Inc. v. Novel Laboratories, Inc. 13-1438 — On Tuesday in an opinion by Judge PROST, a split Federal Circuit vacated a district court’s summary judgment of infringement against Novel. Braintree’s patent claimed a composition for preparing patients for colonoscopies, which was sold under the brand SUPREP®. The preamble recited the composition was for treating “a” patient and the claim required the composition “not produce any clinically significant electrolyte shifts.” The district court construed the language to mean at least one patient administered the composition would not experience clinically significant electrolyte shifts.

The Federal Circuit held “a” patient meant “the general class of persons to whom the patented compositions [were] directed, i.e., a patient population.” This construction was “consistent with the ‘invention the patentee intended to define and protect.’” The district court’s construction would lead to “the absurd result” that infringement could occur even if a clinically significant electrolyte shift occurred in 99 out of 100 patients. Judge MOORE dissented and Judge DYK dissented in part.
(1 to 4 stars rate impact of opinion on patent & trademark law)

SESSION ON DOMESTIC INDUSTRY AT IPO’S APRIL 25 ITC LITIGATION CLASS

A session on domestic industry will be offered during IPO’s “Advanced ITC Litigation Class” on April 25 in Palo Alto, CA. Speakers will address recent developments in the ITC’s domestic industry requirement. The discussion will focus on a practical analysis of the impact of recent cases related to accelerating the domestic industry inquiry; evolution of the domestic industry standard, including licensing; and what recent developments might reveal about the ITC’s approach to domestic industry. Panelists include JOHN SCOTT, Qualcomm Incorporated; TODD LEISTEIN, Nokia USA, Inc.; and BENJAMIN LEVI, McKool Smith. Click here to view the program and to register. Space is limited.

IP IN THE MASS MEDIA

Drug Companies Said to be Less Concerned About Patent Cliff

In a front page story today, the Wall Street Journal reported on a wave of deals among drug companies, with individual companies focusing on what they do best and moving away from diversification. The so-called “patent cliff” resulting from expirations of blockbuster drug patents is said to be viewed as less of a threat now.

Samsung Rebuts Apple’s Damages Claim in Patent Trial

Yesterday BloombergBusinessweek published an article about damages in the Apple v. Samsung patent trial. Samsung argued that the $2.19 billion claimed by Apple is 57 times higher than what Samsung should pay if found to infringe.

Microsoft and Motorola Solutions Enter Patent License Agreement

On Monday the Wall Street Journal announced that Microsoft Corp. and Motorola Solutions Inc. entered into a patent license agreement under which Microsoft granted worldwide coverage for certain Motorola Solutions devices.

JOIN THE IPO EDUCATION FOUNDATION PUBLIC AWARENESS CAMPAIGN

The IPO Education Foundation’s mission is to educate the public on the value of IP. The Foundation does this through a number of programs including the IP Video Contest and the Inventor of the Year Award.

The Video Contest is in its fourth year and is currently accepting submissions. The Inventor of the Year Award is in its 41st year and is also accepting submissions. For more information on both programs go to www.ipoef.org. Join us and help spread the word about the value of IP by sharing information on these programs with your friends, family, and colleagues!


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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