Trademarks

Supreme Court Holds Trademark Tacking is a Question, like any Inquiry from the Perspective of an Ordinary Purchaser or Consumer, Should be Decided by the Jury

Background: In a priority contest between trademark owners, the owner of a mark is entitled to “tack on” earlier use of a similar mark provided that the two marks are sufficiently similar.  Some circuits treated the question of whether the marks are sufficiently similar as a question of fact for a jury to decide, while …

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Patent Prosecution

Supreme Court Endorses De Novo Review of Claim Construction, But Holds that Subsidiary Facts Underlying Claim Construction are Reviewed for Clear Error

Background: Patent claim construction findings are a key aspect to patent infringement cases. Previously, the Federal Circuit reviewed the entire claim construction issue, including any subsidiary facts, de novo. Holding: While the ultimate claim construction remains reviewable de novo, the Federal Circuit must accept any subsidiary findings in the claim construction unless those findings are …

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BioPharma, Featured

The USPTO Giveth and Taketh Away: New PTA Rules Following Novartis v. Lee

On January 9, 2015, the final rules were published regarding patent term adjustment (PTA) following the decision in Novartis AG v. Lee 740 F.3d 593 (Fed. Cir. 2014). Novartis Background In Novartis, “B” delay under the PTA statute was at issue, which is a “[g]uarantee of no more than 3-year application pendency.” 35 U.S.C. §154(b)(1)(B). …

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BioPharma

Myriad Disappointments for Biotech, but Hope Remains

CAFC extends the reach of subject-matter ineligibility under Myriad Following Myriad Genetic’s 2013 loss at the Supreme Court (Ass’n for Molecular Pathology v. Myriad Genetics, 133 S. Ct. 2107 (2013), herein “Myriad SC”) regarding US 5,747,282 Claim 1, several competitors began to enter the market for BRCA-1 & -2 detection kits. Myriad responded by suing …

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BioPharma, Featured

The December Sequel to the USPTO’s March Guidance

The much-anticipated subject-matter eligibility Guidance has finally been released by the U.S. Patent & Trademark Office (USPTO) for public inspection and comment. Although the new Guidance is being circulated for public comment—and is subject to revision—it is effective immediately for use in examining applications. The new Guidance supersedes the 9th Edition of MPEP §2106, the …

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IPR-PGR

IPR Patent Owner Succeeds in Antedating Key Prior Art

A witness credibility battle erupted in Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, where the Board found that Patent Owner antedated a key prior art reference…despite the fact that the inventor testified on behalf of Petitioner. To uphold its burden of proving an earlier invention, Patent Owner relied on testimony from two fact witnesses who …

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BioPharma, Featured

BPCIA

BPCIA = Biologics Price Competition & Innovation Act Before Plaintiffs Can Invoke (jurisdiction they must file an) Application No standing for declaratory judgment before biosimilar application With the FDA’s recent acceptance of its first biosimilar application, pharmaceutical industry experts are on tenterhooks waiting to see how this new business space will develop. The Federal Circuit …

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BioPharma, Featured

District Court Obviousness Determination Not Up to Par®

Inherent obviousness over a combination of references Par Pharma is the exclusive licensee of US 7,101,576, which claims a method of treating wasting diseases by administering megestrol acetate. This patent is listed in the Orange Book as covering Par Pharma’s MEGACE ES. When TWi Pharma filed an abbreviated new drug application to manufacture a generic …

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IPR-PGR

Pyrrhic Victory: IPR Petition Denied Because Claims Indefinite

Patent Owner won a Pyrrhic victory in Facebook v. TLI Communications, IPR2014-00566, wherein the Board denied the Petition, but for a reason that calls into question the future viability of the patent-in-suit. Namely, the Board found that it could not construe the means-plus-function claim limitation at issue and, as such, the claim is indefinite and …

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IPR-PGR

Inter Partes Review – A Fair and Efficient Litigation Alternative

With special thanks to my co-author, Laura Sheridan of Google, the linked article takes a detailed look at the first two years of inter partes review practice before the Patent Trial and Appeal Board and seeks to provide insights into some of the most critical areas of the proceedings. Like all change, the implementation of IPR has caused considerable …

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