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IPO Daily News™

Wednesday, 15 May 2019 7:56 am

* COURT DID NOT CLEARLY ERROR IN NONOBVIOUSNESS DETERMINATION

Novartis Pharm. V. West-Ward Pharm., 18-1434 — On Monday in an opinion by Judge STOLL, the Federal Circuit upheld a district court decision that Novartis’s claims were valid. The patent claimed methods of using everolimus, the active ingredient in Novartis’s Afinitor, for treating advanced renal cell carcinoma (RCC). West-Ward’s predecessor filed an abbreviated new drug application (ANDA) seeking FDA approval for a generic version. It argued that the district court erred by imposing heightened standards for proving obviousness.

The Federal Circuit said the district court erred in using a lead compound analysis to evaluate motivation to combine because the patent claimed a method of using a compound rather than the compound itself. The “proper inquiry” was whether a skilled artisan “would have been motivated to modify the prior art disclosing use of [a different compound] to treat advanced RCC with the prior art disclosing everolimus,” not whether everolimus would have been selected over other treatments. However, the error was harmless because a skilled artisan would have had no reasonable expectation of success given the phase I trial results, the compounds’ different properties, and that the molecular biology of advanced RCC was not completely understood.
(1 to 4 stars rate impact of opinion on patent & trademark law)

* STATEMENT FROM SHARED WRITTEN DESCRIPTION WAS NOT CLEAR AND UNAMBIGUOUS DEFINITION-LIMITING TERM

Bradium Techs. LLC v. Iancu, 17-2579 — On Monday in an opinion by Judge REYNA, the Federal Circuit upheld USPTO inter partes review decisions rejecting Bradium’s claims as obvious. Bradium’s patents were “broadly directed to retrieving large-scale images over network communication channels in low-bandwidth conditions and to displaying such images on client devices with limited processing power.” Bradium argued that the USPTO should have construed “limited bandwidth communications channel” as “substantially permanently limited in bandwidth due to technical constraints on the channel itself.”

The Federal Circuit disagreed, holding that the USPTO correctly construed this term to mean “a communications channel whose bandwidth is limited.” It explained that the statement Bradium cited from the shared written description “describing two causes for limited bandwidth is not a clear and unambiguous definition limiting the term to only one cause, contrary to its plain and ordinary meaning.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

IPO SEEKS CANDIDATES FOR EXECUTIVE DIRECTOR

IPO is seeking an Executive Director to lead the strategic priorities for IPO’s staff, programs, expansion, and execution of its mission. The Executive Director works directly with the Officers, Executive Committee and 50-member Board of Directors in this effort.

IPO, established in 1972, is a trade association for owners of patents, trademarks, copyrights and trade secrets. IPO serves all intellectual property owners in all industries and all fields of technology. As owners of intellectual property we believe that intellectual property rights accelerate the innovation, creativity, and investment necessary to address major global challenges and improve lives. We strive to maximize innovation across all industries and improve lives throughout the world by fostering high quality rights and effective, harmonized systems to obtain and enforce them, on behalf of all our members.

For more information, please visit our website. To apply, please send a cover letter and a copy of your CV to recruiting@exudeinc.com.

U.S. COPYRIGHT OFFICE EXTENDS DEADLINE FOR COMMENTS ON DRAFT UPDATE TO COMPENDIUM OF U.S. COPYRIGHT OFFICE PRACTICES

As previously reported, the U.S. Copyright Office is seeking comments on a public draft of an update to its administrative manual, the Compendium of U.S. Copyright Office Practices, Third Edition. The Compendium serves as ‘‘both a technical manual for the Copyright Office’s staff, as well as a guidebook for authors, copyright licensees, practitioners, scholars, the courts, and members of the general public.’’ Yesterday, the Office issued a Federal Register notice extending the deadline for such comments until 31 May 2019.