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By: Patrick J. Halloran, Ph.D., J.D.

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Patrick Halloran

Latest from Life Science IP

Genentech, Inc. v. Andrei Iancu (USPTO) Docket No. 2019-1263, -1265, -1267, -1270 IPRs 2017-00731, -01121, -02063, -00737, -01122, -01960 LOURIE, MOORE, WALLACH March 26, 2020 Non-Precedential Brief Summary: Board’s claim construction (e.g., “effective amount”), obviousness conclusion and denial of amendment after modifying its institution decision under SAS affirmed. Summary: Genentech (GT) appealed Board IPR final written decisions (FWDs) finding the challenged claims of US 7,846,441 and 7,892,549 relating to methods for treating cancers that overexpress the ErbB2 receptor with an antibody “which binds to epitope 4D5” unpatentable for obviousness, and the Board’s denial of GT’s motion to amend in the…
Galderma Labs., Nestle Skin Health S.A. et al. v. Amneal Pharm. LLC et al. Docket No. 2019-1021 LOURIE, MOORE, STOLL March 25, 2020 Non-Precedential Brief Summary: DC finding of infringement of certain claims affirmed as statements made in related IPR was not prosecution history estoppel; finding of infringement of others reversed for lack of “particularized testimony”. Summary: Amneal appealed DC finding that it infringes the asserted claims of Galderma’s “Chang Patents” (US 8,206,740; 8,394,405; and 8,470,364) and the “Ashley II Patents” (US 8,603,506; US 9,241,946) relating to low-dose doxycycline formulations for treating skin disease (e.g., acne, rosacea). IPR proceedings regarding…
Facebook, Inc. v. Windy City Innovations, LLC Docket No. 2018-1400-3, -1537, -1540-41 (IPR2016-00=1156-59, IPR2017-00659, -00709 PROST, PLAGER, O’MALLEY March 18, 2020 Brief Summary: Board improperly joined FB as a party to its own existing IPRs under section 315(c); various obviousness conclusions affirmed-in-part, vacated-in-part, and affirmed. Summary: Windy City (WC) sued Facebook (FB) for infringement of US 8,548,245; 8,694,657; 8,473,552; and 8,407,356 related to methods for handling “‘out-of-band’ multimedia information” and “‘censorship’ of content”. FB filed petitions for IPR of each of the four patents on the last day of the one-year window from the date WC filed its complaint (section…
Kaken Pharm. Co., Inc., Bausch Health Cos. Inc. v. USPTO Docket No. 2018-2232 (IPR2017-00190, -01429) NEWMAN, O’MALLEY, TARANTO March 13, 2020 Brief Summary: IPR obviousness decision reversed based on erroneous claim construction in method of treatment claim. Summary: Kaken appealed PTAB (“Board”) IPR decision finding all claims of US 7,214,506 directed to a method for treating…onychomycosis” by “topically administering” and antifungal agent (the azole agent KP-103) to the nail (e.g., toenail) of a subject. Acrux filed the IPR petition alleging obviousness based on multiple prior art references (JP ‘639, U.S. Pat. No. 5,391,367, and the non-patent references “Hay” and the…
Illumina, Inc., Sequenom, Inc. v. Ariosa Diagnostics, Inc. et al. Docket No. 2019-1419 LOURIE, MOORE, REYNA March 17, 2020 Brief Summary: DC finding that Illumina’s fetal DNA-related claims are patent ineligible reversed. Summary: Illumina appealed DC decision finding certain claims of Illumina’s US 9,580,751 and 9,738,931 as ineligible under section 101 for being directed to natural phenomenon. The independent claims of each patent are directed to methods for preparing a fraction of cell-free DNA that is enriched in fetal DNA (e.g., “extracting DNA from a substantially cell-free sample of blood”, “producing a fraction of the DNA extracted”, and “analyzing a…
Interesting research: 1) An Effective Treatment for Coronavirus (Todaro and Rigano) https://docs.google.com/document/d/e/2PACX-1vTi-g18ftNZUMRAj2SwRPodtscFio7bJ7GdNgbJAGbdfF67WuRJB3ZsidgpidB2eocFHAVjIL-7deJ7/pub#ftnt6 2) Expert Consensus on Chloroquine Phosphate for the Treatment of Novel Coronavirus Pneumonia (Zhonghua, et al.) https://pubmed.ncbi.nlm.nih.gov/32164085/?fbclid=IwAR0ZNk2JXMGYCDLKHwB5kykkLUviE03JqNRWGH8P8lt1NRKVJLk6cOIfjv8 3) In Vitro Antiviral Activity and Projection of Optimized Dosing Design of Hydroxychloroquine for the Treatment of Severe Acute Respiratory Syndrome Coronavirus 2 (SARS-CoV-2) (Yao, et al.) href=”https://pubmed.ncbi.nlm.nih.gov/32150618/ 4) Coronavirus Covid-19: Chloroquine data; Japan to trial HIV drug (https://www.clinicaltrialsarena.com/news/coronavirus-covid-19-choroquine-data/)…
Boehringer Ingelheim Pharm. et al. v. Mylan Pharmaceuticals Inc. Docket No. 2019-1172 DYK, MOORE, HUGHES March 16, 2020 Non-precedential Brief Summary: DC decision of ineligibility under 101 for method of treatment claims reversed; invalidity for double-patenting and obviousness affirmed. Summary: Boehringer appealed DC judgement that certain claims of US 8,853,156 are directed to ineligible subject matter under section 101, and the other claims of US 9,173,859 and 8,673,927 are invalid for obviousness-type double patenting and obviousness over the prior art. The patents relate to treatment of type 2 diabetes using DPP-IV inhibitors (e.g., linagliptin). The ‘156 claims, directed to “[a]…
Customedia Technologies, LLC v. Dish Network Corp. et al. Docket No. 2018-2239 (CBM2017-00023), 2019-1000 (CBM2017-00032) PROST, DYK, MOORE March 6, 2020 Brief Summary: PTAB CBM decisions of patent ineligibility under 101 affirmed (e.g., “computers are invoked merely as a tool”, not to improve functionality) Summary: Customedia appealed PTAB (“Board”) CBM final written decisions (FWDs) finding certain claims of US 8,719,090 and 9,053,494 relating to “data delivery system[s] for providing automatic delivery of multimedia data products” ineligible under section 101 and certain ‘090 claims invalid for anticipation or obviousness. The FC panel applied the two-step Alice test (US 2014; step 1:…
Uber Technologies, Inc. v. X One, Inc. Docket No. 2019-1165 (IPR2017-01264) PROST, DYK, WALLACH March 3, 2020 Non-precedential Brief Summary: Board IPR decision of no obviousness of certain mapping-related claims reversed as claim construction would exclude the preferred embodiment; obviousness of another claim affirmed. Summary: Uber appealed Board IPR decision findings certain claims of X One’s US 8,798,647 regarding methods for “displaying a map of the positions of a ‘first wireless device’ and a ‘second wireless device’ on the first wireless device, and updating that map based on ‘positional update[s]’ as to the location of the second wireless device”, each…
GS Cleantech, Cantor Colburn LLP v. Adkins Energy LLC, Big River Resources et al. Docket No. 2016-2231, -1838, 2017-1832 REYNA, WALLACH, HUGHES March 2, 2020 Brief Summary: DC finding of inequitable conduct for failure to disclose pre-critical date offer for sale affirmed. Summary: GS Cleantech (“Cleantech”) appealed DC finding the Patents-in-Suit (US 7,601,858; 8,008,516; 8,008,517; and 8,283,484 (shared specification)) directed to methods for recovering oil from a dry mill ethanol plant’s byproduct (“thin sillage”) unenforceable due to inequitable conduct. The inequitable conduct (IC) issue related “to whether the patentee failed to disclose information regarding the on-sale bar under 35 U.S.C.…
Acoustic Technology, Inc. v. Itron Networked Solutions, Inc. Docket No. 2019-1061 (IPR2017-1061) (see also FC Docket Nos. 2019-1059, -1060) MOORE, REYNA, TARANTO February 13, 2020 Brief Summary: Appeal based on time-bar arguments not presented to the Board were waived; anticipation and obviousness conclusions affirmed. Summary: Acoustic appealed PTAB finding the challenged claim of US 6,509,841 relating to remote monitoring of utility meters unpatentable. Acoustic argued that that merger of Petitioner Silver Spring Networks, Inc. (SSN) with “undisputably time-barred” Itron, Inc. during the IPR proceeding created a time-bar against SSN. The FC panel opinion explains that Acoustic sued Itron in March…
HZNP Medicines LLC et al. v. Actavis Laboratories UT, Inc. Docket No. 2017-2149, -2152-53, -2202-3, -2206 PROST, NEWMAN, REYNA October 10, 2019 (update Feb. 25, 2020) Update (2/25/20): Petition for en banc hearing denied. Judges Lourie, Newman, O’Malley and Stoll dissented, arguing that the majority “erroneously construed the ‘consisting essentially of’ language” of claim 49 “in evaluating the definiteness requirement of 35 U.S.C. § 112” because “better drying time is not in the claim, and it is the claims that the stature requires be definite” and “[t]he possibility of inclusion of other[]” ingredients “implied by the language at issue here,…
In Re: Google LLC Docket No. 2019-126 DYK, WALLACH, TARANTO February 13, 2020 Brief Summary: ED TX not the proper venue since Google “had no employee or agent regularly conducting its business” in that district (ISPs handling servers are not Google’s agents). Summary: Google petitioned for a writ of mandamus regarding the Eastern District of TX DC’s finding it is the proper venue since Google has “a regular and established place of business” there “based on the presence of several Google Cache (‘GCG’) servers, which function as local caches for Google data” (TC Heartland, US 2017; In re Cray, FC…
Serta Simmons Bedding, LLC et al. v. Casper Sleep Inc. Docket No. 2019-1098, -1159 DYK, PLAGER, STOLL February 13, 2020 Brief Summary: DC grant of SJ vacated and remanded due to pre-existing settlement agreement. Summary: Serta appealed DC grant of Casper’s summary judgment (SJ) motions of non-infringement and denial of Serta’s motions to vacate the SJ and to enforce a settlement agreement (SA). The disputed patents are US 7,036,137; 7,424,763; and 8,918,935 relating to mattresses including a channel and methods for forming it. The SA was entered into on June 18, 2018 while Casper’s SJ motions were pending, and the…
Apple Inc. v. Andrea Electronics Corporation Docket No. 2018-2382, -2383 (IPR2017-00626, -00627) DYK, PLAGER, STOLL February 7, 2020 Brief Summary: Board erroneously excluded Apple’s IPR reply arguments as new as compared to IPR petition (‘626 remanded), and no anticipation or obviousness finding affirmed (‘627). Summary: Apple appealed two IPR final written decisions (‘626 FWD and ‘627 FWD) regarding Andrea’s US 6,363,345 relating to digital audio processing (“[a]n apparatus for cancelling noise” using a “threshold detector”). Apple challenged ‘345 patent claims 1-25 and 38-47 but this appeal relates to claims 6-9. Regarding the ‘626 FWD, Apple challenged claims 6-9 as obvious…
Cheetah Omni LLC v. AT&T Services, Inc. et al. Docket No. 2019-1264 LOURIE, BRYSON, CHEN February 6, 2020 Brief Summary: DC dismissal of Cheetah’s claims against AT&T affirmed since grandchild patent was impliedly included in prior license to grandparent parent. Summary: Cheetah appealed DC dismissal of its claims of infringement of US 7,522,836 relating to optical communication networks with prejudice due to a prior agreement to settle litigation (the ROADM litigation). The prior agreement was made with Fujitsu and Ciena. After Cheetah asserted the ‘836 patent against AT&T, Ciena successfully intervened as it manufacture and supplies components to AT&T that…