Intellectual Property

PGR2018-00001 (US 9,539,268 B2) Final Written Decision April 29, 2019 Brief summary: GG found to have demonstrated by a preponderance of the evidence that Antecip’s claims related to zoledronic acid and methods for using the same to treat arthritis are unpatentable for lack of enablement. Summary: Grünenthal GmbH (GG) requested post-grant review (PGR) of Antecip’s claims 3-30 (claims 1 and 2 were statutorily disclaimed) of US 9,539,268 B2 relating to “[a] method of treating arthritis comprising orally administering a dosage form” of zoledronic acid, as well as pharmaceutical oral dosage forms thereof. The FWD explains that FWDs also issued regarding…
Lecat’s Ventriloscope v. MT Tool & Mfg., No. 16 C 5298, Slip Op. (N.D. Ill. Nov. 20, 2018) (Castillo, C.J.). Chief Judge Castillo granted in part each parties’ cross-motion for summary judgment in this patent case involving a training system for ausculation – the act of listening to sounds within the body to diagnose conditions. As an initial matter, the Court admonished both parties for “conclusory” briefs that devoted “very little” attention, often less than a page for each substantive argument and “frequently” failed to cite any case law. Of particular note, the Court held as follows on plaintiff’s summary…
Docket No. 2018-1054 WALLACH, CLEVENGER, STOLL May 3, 2019 Brief summary: DC holding that Endo’s claims to low “ABUK” oxymorphone were not shown to be invalid for obviousness affirmed. Summary: Actavis appealed DC holding that claims 1-6 of Endo’s US 8,871,779 claiming “[a] hydrochloride salt of oxymorphone comprising less than 0.001% of 14-hydroxymorphinone” (see FN3 explaining that this is an oxymorphone impurity/precursory, aka “oxymorphone ABUK”; and 14-hydroxycodeinone is an ABUK impurity in oxycodone, aka “oxycodone ABUK”). Actavis argued that the DC erred by “misconstruing the claim term 14-hydroxymorphinone” and in the obviousness determination. The FC panel explained that in a…
By Wendy Heilbutwendy@jayaramlaw.com During day-to-day functions in the workplace, it is easy to see that diversity is a plus.  For example, it is great when a younger colleague is more familiar with a contemporary cultural reference, or a colleague who celebrates different holidays can remind us that clients sharing his faith won’t want to communicate on a particular day, or a colleague of a different gender identity can provide an external viewpoint and help us escape an echo chamber.  Exposure to a myriad of viewpoints challenges our opinions and allows us to learn and evolve. We’ve all heard the…
Still from Momentum Generation, All Rise Films Congratulations to firm clients Jeff and Michael Zimbalist of All Rise Films, for their wins at the New York Festivals® TV & Film Awards last month! Their film Momentum Generation, which documents the emergent careers of a group of young surfers in the 1990s, took home the Gold World Medals for Best Direction, Best Editing, Best Writing, Sports Documentary, and Feature Documentary.…
Last year, firm founder Vivek Jayaram co-founded a record label with longtime pal and Miami music industry vet Lauren Reskin and Las Nubes drummer Emile Milgrim.  Dubbed Sweat Records Records (an obvious nod to Lauren’s legendary record store, Sweat Records), the label has aspirations to showcase contemporary music emerging the tropical potpourri that is Miami. The label’s first act is Dracula, a haunting folk duo that sings in three languages and have become fast critical darlings.  Their first single, a cover of the chart-topping Selena hit “Como La Flor,” found its way onto NPR’s best tracks of 2018:  “For…
Docket No. 2018-1054 WALLACH, CLEVENGER, STOLL May 3, 2019 Brief summary: DC holding that Endo’s claims to low “ABUK” oxymorphone were not shown to be invalid for obviousness affirmed. Summary: Actavis appealed DC holding that claims 1-6 of Endo’s US 8,871,779 claiming “[a] hydrochloride salt of oxymorphone comprising less than 0.001% of 14-hydroxymorphinone” (see FN3 explaining that this is an oxymorphone impurity/precursory, aka “oxymorphone ABUK”; and 14-hydroxycodeinone is an ABUK impurity in oxycodone, aka “oxycodone ABUK”). Actavis argued that the DC erred by “misconstruing the claim term 14-hydroxymorphinone” and in the obviousness determination. The FC panel explained that in a…
Cascades AV LLC v. Evertz Microsystems Ltd., No. 17 C 7881, Slip Op. (N.D. Ill. Jan. 11, 2019) (Durkin, J.). Judge Durkin denied defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s patent infrignement claims in this patent case involving lip-synching patents and defendant Everetz’s accused fingerprint reading systems. Direct Infringement Citing Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256, 1260 (Fed. Cir. 2017), the Court held that specific facts were not necessary to plead infringement. Fair notice only required identification of the patents and a claim, even a general one, that they infringed an identified…
PGR2018-00001 (US 9,539,268 B2) Final Written Decision April 29, 2019 Brief summary: GG found to have demonstrated by a preponderance of the evidence that Antecip’s claims related to zoledronic acid and methods for using the same to treat arthritis are unpatentable for lack of enablement. Summary: Grünenthal GmbH (GG) requested post-grant review (PGR) of Antecip’s claims 3-30 (claims 1 and 2 were statutorily disclaimed) of US 9,539,268 B2 relating to “[a] method of treating arthritis comprising orally administering a dosage form” of zoledronic acid, as well as pharmaceutical oral dosage forms thereof. The FWD explains that FWDs also issued regarding…
Design Basics, LLC v. WK Olson Architects, Inc., No. 17 C 7432, Slip Op. (N.D. Ill. Feb. 11, 2019) (Ellis, J.). Judge Ellis denied defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss as to plaintiffs’ copyright infringement claims and granted it as to plaintiffs’ Digital Millenium Copyright Act (DMCA) claims in this suit involving architectural plans. The Court dismissed plaintiffs’ initial complaint because its allegations were too conclusory. Plaintiffs amended their complaint asserting additional facts. Plaintiffs’ allege infringement of twelve copyrighted works by eighteen of defendants’ plans, all specifically identified. Defendants do not dispute plaintiffs’ copyright ownership. They dispute…
Seasoned business owners usually know enough to invest in the protection of some form of business entity. Too often, these individuals fail to engage in the necessary business and tax planning to get the most from their investment. Whether you are a sole proprietor, partnership, corporation, limited liability company (LLC), limited liability partnership, or hybrid entity, you will gain useful knowledge. This webinar covers why a business owner should consider the benefits and costs of each type of entity, the existence of limited liability for owners, flexibility in terms of governance and ownership structure, and favorable treatment under state…
Docket Nos. 2018-1247 and 2018-114 PROST, WALLACH (D), HUGHES May 1, 2019 Brief summary: ITC decision “that Amarin’s allegations are precluded by the FDCA” affirmed since, e.g., “[p]rivate parties may not bring [FDCA] enforcement suits.” Summary: Amarin, which markets Vascepa(TM) fish oil capsules (“the only purified ethyl ester E-EPA product sold in the [US] as an FDA-approved drug” (E-EPA being the ethyl ester form of eicosapentaenoic acid)), appealed the ITC decision not to institute an unfair competition or unfair act investigation under 19 USC § 1337(a)(1)(A). Amarin filed a complaint under § 337 of the Tariff Act of 1930 alleging…
We’re proud to share that a new documentary, The Last Resort, produced and co-directed by firm client Dennis Scholl, premiered on Netflix earlier this year and is receiving wonderful reviews. The Last Resort leads viewers back to the bygone era of 1970s Miami Beach, from its boom as the hottest retirement spot for the Jewish community, to its decline as drugs and crime took over. The story is told through the lenses of American photographers Andy Sweet and Gary Monroe. The Miami Herald calls it “affectionate, thoughtful, and hugely entertaining” and the Hollywood Reporter described the documentary…
By Palak V. Patelpalak@jayaramlaw.com Gigi Hadid is a new generation influencer whose popularity is largely based on social media. With nearly fifty million followers on Instagram, each of her posts garner thousands of likes and comments in a matter of hours. Each post can have a significant impact on Hadid’s career. However, a single post can also have legal ramifications. Gigi Hadid has been sued twice for posting paparazzi photographs without a license or permission from the copyright holder. The first suit was settled out of court. The most recent case against Hadid is still pending. The complaint filed…
Docket No. 2018-1257-8, -1288, -1290 (multiple IPRs) Moore, WALLACH, HUGHES April 26, 2019 Brief summary: Board IPR decisions finding Lilly’s claims relating to administration of vitamin B12 with pemetrexed were not shown to be obvious affirmed. Summary: Neptune Genetics (NG) appealed Board holding that claims 1-22 of Lilly’s US 7,772,209 relating to administering pemetrexed disodium with folic acid and a “methylmalonic acid lowering agent” (MMA; e.g., vitamin B12) were not shown to be unpatentable for obviousness. Claim 12 relates to a similar method but as “[a]n improved method for administering pemetrexed disodium to a patient in need of chemotherapeutic treatment”.…
DR Distribs., LLC v. 21 Century Smoking, Inc., No. 12 C 50324, Slip Op. (N.D. Ill. Feb. 12, 2019) (Johnston, Mag. J.). Magistrate Judge Johnston denied defendants’ motion to amend dismissing their defamation counterclaim in this Lanham Act dispute. At the outset, the Court explained that these “bizarre” circumstances – a party opposing its opponent’s decision to drop a claim – were created by an ESI “donnybrook” involving the loss of apparently relevant emails and instant messages. While it was not expressly stated, the “obvious” purpose of dismissing the claim was to moot the ESI dispute. And plaintiff’s reason for…