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A recent decision from the Federal Circuit indicates that the order in which a court considers evidence attempting to demonstrate non-obviousness is not important, so long as it is considered. In prosecution, this translates to an increased need for strong declarations when traversing obviousness rejections. In Eli Lilly and Co. v. Perrigo Co., the United States… Read more »
On November 7, 2017, the USPTO issued a final rule establishing that communications “between a client and a USPTO patent practitioner or a foreign jurisdiction patent practitioner that is reasonably necessary and incident to the scope of the practitioner’s authority shall receive the same protections of privilege under Federal law as if that communication were… Read more »
The Federal Circuit reversed and remanded a decision by the Delaware district court that found claims directed to a genus of antibodies satisfied the written description and enablement requirements.1 The Federal Circuit held that the district court erred by (1) excluding post-priority-date evidence to demonstrate that the patents did not provide adequate written description and (2)… Read more »
The PTAB found that methods for treating patients using the chemotherapy drug Jevtana were unpatentable in light of references that taught administering the drug, but were silent on the drug’s clinical efficacy.1 The Board disagreed with Aventis that the claim’s preamble required clinical efficacy, and indeed found the preamble to be non-limiting. Representative independent claims of… Read more »
The Federal Circuit in In re Stepan vacated and remanded a PTAB decision that affirmed an examiner’s rejection of Stepan’s claims as obvious, stating that the Board “failed to adequately articulate its reasoning, erroneously rejected relevant evidence of nonobviousness, and improperly shifted to Stepan the burden of proving patentability.”1 Stepan filed a patent application directed to herbicidal… Read more »
In Millenium v. Sandoz,1 the claim at issue recites a lyophilized compound that is an ester of bortezomib and D-mannitol. The Federal Circuit formulated the obviousness analysis by asking whether a person of ordinary skill, seeking to remedy the known instability of bortezomib “would obviously produce the D-mannitol ester of bortezomib, a previously unknown compound.”2 Employing a lead… Read more »
The PTO recently issued a report on two roundtables held to discuss patent eligible subject matter. Views on recent Supreme Court subject matter eligibility jurisprudence varied depending on the industry affected. The life sciences industry was strongly critical of the Mayo/Alice two-step framework. In particular, representatives from the life sciences industry asserted that “natural products and their… Read more »
A patent attorney who was fired for refusing to file patent applications he thought lacked merit continues to have his day in court for wrongful termination. Patent practitioners are required to adhere to the Rules of Professional Conduct (RPC) set forth in 37 C.F.R. §§ 11.301-309. These RPCs include that: A practitioner shall not bring… Read more »
In a recent Federal Circuit decision, the court found that a single statement made during prosecution of a patent family lent sufficient clarity to the claim term at issue. 1 The patent at issue is part of a patent family that involves wireless digital audio music transmission. 2 The patents describe a “wireless digital audio music system [that]… Read more »
The Federal Circuit recently reversed and remanded a district court’s denial of attorney’s fees to ADS after Rothschild sued ADS for infringement.1 The Federal Circuit found that the lower court abused its discretion for (a) failing to consider Rothschild’s willful ignorance of the prior art; (b) misjudging Rothschild’s conduct in other litigation and (c) improperly conflating… Read more »
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