Warren Woessner will be moderating a panel on university-industry (from start-ups to big pharma) partnering in the area of companion diagnostics and personalized medicine at the BIO IP and Diagnostics Symposium, September 26th at the Alexandria Hilton. Since the first two sessions will discuss the disinclination of the Patent Office to issue any claims directed to diagnostic tests in view of Prometheus v. Mayo, it should be interesting to see how the future of claims to diagnostic testing will evolve - or if it will evolve within the patent system. As Yogi Berra said, “The future ain’t what it used to be.” Has the era of the mass extinction of life science patents that began with UC v. Lilly and the Metabolite Labs. dissent continue to gather momentum, until the only question to discuss is “What’s Left to Patent?”
A guest post by Donald Chisum and Janice Mueller.
In August 2014 the Chisum Patent Academy held two back-to-back seminars in its Seattle, Washington facility to discuss and debate current developments in patent law. Each roundtable seminar group was limited to ten persons; sessions were led by treatise authors and educators Donald Chisum and Janice Mueller.
Attendees included experienced patent litigators and prosecutors from law firms and corporations in the U.S., Canada, Germany, and India. Each seminar met for three days. Seattle’s great summer weather, coffee, and lively discussion were enjoyed by all.
Here’s a recap of the takeaways from the seminars:
▪ 2014 Supreme Court Decisions: Moderation? The year 2014 was an undoubtedly high water mark in terms of the number of pertinent SCOTUS patent law decisions–six directly on patent law issues plus a copyright case (Petrella) that could alter the laches defense for patent infringement claims. Commentary and initial responses, including those by the PTO, suggest that the cases represent a significant move toward constricting the availability of patent rights. Yet, in-depth discussions of the cases during our seminars detected a tone of moderation. For example, Alice has been read as broadly precluding patents on “software.” However, language in Alice strongly suggests that claims to technical advances, even broad claims that involve computer implementation, remain patent eligible. Unfortunately for patent applicants and owners, it will take time and resources to establish such eligibility through appeals from PTO rejections and summary district court invalidations.
The following has been posted with the permission of their authors James E. Valentine and James C. Shehan of Hyman, Phelps & McNamara as part of their FDA Law Blog.
August 09, 2014
FDA’s New Biosimilars Guidance Has Sponsors Provide Information to Win Reference Product Exclusivity; Liberal Criteria Opens the Door to More Exclusivities Being Awarded
By James E. Valentine* & James C. Shehan —
On August 5, 2014, FDA announced the availability of its most recent biosimilars guidance entitled, “Reference Product Exclusivity for Biological Products Filed Under Section 351(a) of the PHS Act” (“FDA Draft Guidance”). The Draft Guidance puts some sponsors of BLAs past, present, and future, on notice that FDA wants them to submit certain information for their biologics to be considered for “reference product exclusivity.” But that’s a burden that sponsors will likely gladly bear, because FDA’s proposed broad interpretation of structural modification, a key term in determining whether a related product differs enough from a sponsor’s structurally related product to merit its own exclusivity, makes more products eligible for exclusivity than is required under the Biologics Price Competition and Innovation Act of 2009 (“BPCIA”).
In Tyco Healthcare Group v. Mutual Pharm. Co., App. no. 13-1386 (Fed. Cir. August 6, 2014), a divided panel of the court reversed a district court’s summary judgment ruling dismissing antitrust charges brought by ANDA filer Mutual against patent-holder Tyco. (A copy of the decision can be found at the end of this post.) In what appears to be routine Hatch-Waxman litigation, the majority of the panel ruled that the NDA holder’s (the patent-holder’s) initiation of an infringement action following the ANDA filer’s para. IV certification could give rise to antitrust violations as “sham litigation.” The majority further held that the Citizen’s Petition–urged to contain baseless allegations of non-equivalence, filed by the NDA holder, following a finding of non-infringement by the proposed generic product, could also give rise to antitrust liability.
Judge Newman wrote a well-reasoned dissent that basically said that the patent/NDA holder has a statutory right to file an infringement suit after it receives notice of an ANDA filed with a para. IV certification. Judge Newman also wrote that the patent/NDA holder has a constitutional right (to petition), that should trump any speculative antitrust-based claims for damages.
It would take pages to walk through all the factual bases for the parties’ arguments, but if you just read Judge Newman’s dissent, you will get a good refresher course on the historically (limited) role of antitrust law in patent litigation. Maybe I’m getting too sensitive, but this seems like one more decision that is essentially anti-patent. At least the majority followed Therasense and did not find that plaintiff potentially liable for antitrust violations because it asserted a patent that the defendant urged was obtained by fraud committed by the patent owner, Sandoz.