Patrick J. Halloran, Ph.D., J.D.

Pat is a member of the American Bar Association, the American Intellectual Property Law Association, the American Chemical Society, the Federal Circuit Bar Association, the Illinois State Bar Association, and the Licensing Executives Society.

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Illumina, Inc., Sequenom, Inc. v. Ariosa Diagnostics, Inc. et al. Docket No. 2019-1419 LOURIE, MOORE, REYNA March 17, 2020 Update (August 3, 2020): In a revision of its March 17, 2020 opinion reversing the DC’s 101 ineligibility decision, the FC panel reversed the DC’s decision on remand finding the claims invalid under 101 for being “directed to an ineligible natural phenomenon”. The FC panel maintained its prior statements that: “This is not a diagnostic case. And it is not a method of treatment case. It is a method of preparation case.” The FC panel also maintained its position that “CellzDirect…is…
Gensetix, Inc. / Univ. Texas v. Baylor College of Medicine Docket No. 2019-1424 NEWMAN (D/C), O’MALLEY, TARANTO (C) July 24, 2020 Brief Summary: DC correctly found UT could not be involuntarily joined under Eleventh Amendment but abused its discretion in finding suit could not proceed without UT. Summary: Gensetix is the University of Texas’s (UT) exclusive licensee of US 8,728,806 and 9,333,248 directed to methods for modifying a patient’s immune system to fight cancer. Gensetix sued Baylor for infringement and named UT as an involuntary plaintiff pursuant to Rule 19(a). The DC determined that UT could not be added as…
Immunex Corporation, Amgen Manuf., Ltd., Hoffman La-Roche Inc. v. Sandoz Inc., et al. Docket No. 2020-1037 O’MALLEY, REYNA (D), CHEN July 1, 2020 Brief Summary: DC finding of no invalidity for obviousness-type double-patenting (no common ownership), written description or obviousness affirmed. Summary: Sandoz appealed abbreviated Biological License Application (“eBLA”)-related DC judgment that Sandoz has failed to prove the Enbrel® (an anti-TNF antibody) patents-in-suit (US 8,063,182 and 8,163,522) were invalid for obviousness-type double patenting, lack of written description, or obviousness. Immunex (which was acquired by non-party Amgen and was the original licensee) is Roche’s exclusive licensee of the patents-in-suit. Sandoz argued…
Dana-Farber Cancer Institute, Inc. v. Ono Pharm. Co., et al. (Bristol-Myers Squibb) Docket No. 2019-2050 NEWMAN, LOURIE, STOLL July 14, 2020 Brief Summary: DC order to add Dana Farber and GI/Pfizer inventors to the Ono/BMS relating to the use of anti-PD1 antibodies affirmed. Summary: Ono/BMS appealed DC order requiring Dr. Gordon Freeman and Dr. Clive Wood to be added as co-inventors to U.S. Pat. Nos. 7,595,048; 8,168,179; 8,728,474; 9,067,999; 9,073,994; and 9,402,899, each relating to methods for treating cancer using anti-PD1 antibodies. Dana Farber successfully alleged to the DC that its employee Dr. Freeman and Genetics Institute/Pfizer employee Dr. Wood…
B/E Aerospace, Inc. v. C&D Zodiac, Inc. Docket No. 2019-1935, -1936 (IPR2017-01275, -01276) LOURIE, REYNA, HUGHES June 26, 2020 Brief Summary: Board IPR obviousness decision based in part on common sense affirmed. Summary: B/E appealed Board final written decision (FWD) finding certain claims of US 9,073,641 and 9,440,742 related “to space-saving technologies for aircraft enclosures such as lavatory enclosures, closets, and galleys” invalid for obviousness. Representative claim 1 of the ‘641 patent recites “a lavatory unit including a forward wall portion” including “a first recess” and a “second recess”. The Board concluded obviousness because the prior art shows a “contoured…
Shoes By Firebug LLC v. Stride Rite Children’s Group, LLC Docket No. 2019-1622, -1623 (IPR2017-01809, -01810) LOURIE, MOORE, O’MALLEY June 25, 2020 Brief Summary: Board finding that preamble do not limit the claims affirmed for one patent but not the other; obviousness conclusions affirmed. Summary: Firebug appealed Board IPR decisions finding the claims of US 8,992,038 and 9,301,574 directed to illumination systems for shoes unpatentable as obvious. The Board concluded that the preamble term “textile footware” was not limiting to the claim body describing the components and function of the illumination system. The Board also found “the disclosure of the…
Dropbox, Inc. et al. v. Synchronoss Technologies, Inc. Docket No. 2019-1765, -1767, -1823 PROST, WALLACH, HUGHES June 19, 2020 Non-precedential Brief Summary: DC holdings of patent ineligibility affirmed as claims did not, e.g., “describe how to solve the problem in a manner that encompasses something more than the ‘principle in the abstract’”. Summary: Dropbox appealed DC decision holding US 6,178,505, 6,058,399 and 7,567,541 relating to delivery, upload and backup of computer data ineligible under § 101. The DC found “that the patents claim abstract ideas, and…provide no inventive concept transforming the abstract idea into patentable subject matter.” The FC panel…
Boston Scientific Neuromodulation Corp. v. Nevro Corp., Andrei Iancu (USPTO, intervenor) Docket No. 2019-1582, -1635 (IPR2017-01812, -01920) LOURIE, MOORE, O’MALLEY May 29, 2020 Non-precedential Brief Summary: Board IPR final written decisions finding certain of Boston’s claim unpatentable for obviousness and others patentable affirmed. Summary: Boston appealed Board IPR decision finding certain claims of US 6,895,280 relating to “[a] spinal cord stimulation system”, methods for using, and recharging a battery used in the same unpatentable as obvious. Nevro cross-appealed Board IPR decision that certain ‘280 method claims are not unpatentable as obvious. The FC panel first concluded that the Board’s findings…
ESIP Series 2, LLC v. Puzhen Life USA, LLC Docket No. 2019-1659 (IPR2019-02197) LOURIE, REYNA, HUGHES May 19, 2020 Brief Summary: Board IPR obviousness decision affirmed. Board’s real-party-in-interest determination not appealable under § 314(d). Summary: ESIP appealed Board IPR decision finding the claims of US 9,415,130 relating to systems and methods for “germicidal protection and aromatic diffusion in enclosed habitable spaces” (“[a] method for introducing a scent into breathable air”) invalid for obviousness in view of two different combinations of prior art (Sevy and Cronenberg, Sevy and Giroux). The Board determined that “Sevy discloses every element of the challenged claims…
Cochlear Bone Anchored Solutions AB v. Oticon Medical AB, et al. Docket No. 2019-1105, -1106 (IPR2017-01018, -01019) NEWMAN, O’MALLEY, TARANTO May 15, 2020 Brief Summary: Board IPR obviousness findings affirmed, while its analysis of one means-plus-function claim vacated and remanded. The FC panel also emphasized that indefiniteness is not at issue in an IPR. Summary: Cochlear appealed Board IPR finding that Oticon proved claims 4-6 and 11-12 of US 7,043,040 directed to “bone-conducting bone-anchored hearing” aids unpatentable for obviousness. Oticon appealed the Board’s decision that claims 7-10 were not shown to be unpatentable. Cochlear disclaimed claims 1-3 and 13 during…
Boston Scientific Neuromodulation Corp. v. Nevro Corp., USPTO as Intervenor Docket No. 2019-1584 (IPR2017-01899) LOURIE, MOORE, O’MALLEY May 18, 2020 Non-precedential Brief Summary: Board IPR FWD finding BSN’s claims obvious affirmed (e.g., BSN “waived any claim construction argument…by failing to raise it before the Board”, obviousness decision supported by substantial evidence). Summary: BSN appealed the Board’s final written decision (FWD) holding claims 1-20 of US 7,587,241 claiming “[a] method for controlling an implantable medical device” by “monitoring a voltage of a power source” and, “if…above a first threshold…listening for a first type of telemetry” and a second type and discontinuing…
Jodi A. Schwendimann, Cooler Concepts, Inc. v. Arkwright Advanced Coating, Inc. Docket No. 2018-2416, 2019-1012 O’MALLEY, REYNA, WALLACH May 13, 2020 Brief Summary: DC finding of willful infringement and award of prejudgment interest affirmed; “corrected nunc pro tunc” assignment effective to show ownership. Summary: Arkwright appealed DC finding of willful infringement of six US patents regarding methods for transferring images onto a colored base and about $2.6 million damages and pre-judgment interest award. Ms. Schwendimann became the owner of patent applications leading to the disputed patents as part of a settlement with her previous employer. The original complaint against Arkwright…
Cisco Systems, Inc. v. Uniloc 2017 LLC Docket No. 2019-2048 MOORE, O’MALLEY, TARANTO May 13, 2020 Non-Precedential Brief Summary: DC finding of patent ineligibility under § 101 affirmed (abstract idea since claim includes “no specific asserted improvements”). Summary: Uniloc appealed DC finding that claim 6 of US 6,980,522 relating to a radio communication system with “a plurality of stations capable of forming an ad-hoc network” ineligible under § 101. Under the Alice (US 2014) eligibility framework, the DC found “that the claims were directed to the abstract idea of ‘ranking stations based on antenna performance characteristics and selecting the station…
Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC Docket No. 2019-1924 O’MALLEY, REYNA, CHEN May 8, 2020 Brief Summary: DC finding of no infringement under DOE based on disclosure-dedication doctrine affirmed. Summary: Eagle appealed DC judgment of non-infringement of US Pat. Nos. 9,265,831; 9,572,796; 9,572,797; and 10,010,533 (four of six Orange Book patents for Eagle’s BELRAPZO® (bendamustine for CLL and indolent B-cell non-Hodgkin lymphoma; NDA N205580). The FC panel opinion explains that all four patents “share the same specification and all independent claims recite essentially the same limitations.” Claim 1 of the ‘796 patent claims “[a] non-aqueous liquid composition comprising…bendamustine…a pharmaceutically…
Grit Energy Solutions, LLC v. Oren Technologies, LLC Docket No. 2019-1063 (IPR2017-00768) PROST, NEWMAN, WALLACH April 30, 2020 Brief Summary: PTAB IPR decision of no obviousness vacated and remanded; Grit found to have Article III standing based on previously dismissed (without prejudice) litigation. Summary: Grit appealed PTAB IPR decision finding claims 1-7 of US 8,585,341 directed to a “proppant discharge system” (a proppant being “a material, such as sand or other particulates, that prevents ground fractures from closing during hydraulic fracturing”) were not shown to be unpatentable for obviousness in view of a US patent (“Eng Soon”) and a French…
Uniloc USA, Inc. et al. v. LG Electronics USA, Inc. et al. Docket No. 2019-1835 MOORE, REYNA, TARANTO April 30, 2020 Brief Summary: DC decision of patent ineligibility under § 101 for being abstract (Alice, step one) reversed and remanded (“patent-eligible improvement to computer functionality”). Summary: Uniloc appealed DC grant of summary judgment (SJ) to LG after finding the ‘049 patent claims directed to communication systems ineligible under § 101 as being directed to an abstract idea. The DC held the claims to be “directed to the abstract idea of ‘additional polling in a wireless communication system,’ analogizing the claims…