Kumar v. Iancu – The Dangers of an Overstuffed Preamble/Note on 37 CFR Part 4.

Clopidogrel Tablets

On November 7, 2018, the Fed. Cir. issued a summary affirmance of the PTAB’s interference decision of September 6, 2016, in Kumar v. Sung (Patent Interference 14/322,039) which found that the claims of U.S. Pat. No. 8,541,422 were obvious over a single prior art reference. Since the Senior Party had dropped out – its patent was found to be obvious as well – the PTO intervened as the defendant in Kumar’s appeal to the Fed. Cir.

The PTO Brief filed in the appeal is of interest due to the thoroughness of its reasoning that, basically, affirmed breaking the preamble into two “limitations”, one of which gave life to the claim as a method of treatment and one which was ignored as a statement of intended use. The main claim is directed to a method of treating thrombosis with S-oxo-clopidogrel, the active metabolite of clopidogrel (Plavix®). While it was known that S-oxo-clopidogrel was more potent in mice than clopidogrel, the ‘422 patent attempted to claim the use of the metabolite to treat patients that do not respond well to clopidogrel:

  1. A method of [1] reducing or alleviating inter individual platelet response variability and metabolite loading in humans in [2] the treatment or prophylaxis of thrombosis or embolisms [1] observed following the administration of clopidogrel comprising administering to a person in need thereof, a composition containing an effective amount of S-oxo-clopidogrel or [an analog thereof or its salt] [Ed. note: I added the numbers to the preamble and shortened the irrelevant part of the claim.

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Yeda Res. and Dev. v. Mylan – “We don’t need no Stinkin’ Prior Art”

The quote is from “Treasure of the Sierra Madre” when a bandido leader is trying to convince Bogart that his gang are Federales, and Bogie asks to see their badges. In the context of Yeda Res. and Dev. v. Mylan, Appeal no. 2017-1594 et al. (Fed. Cir., October 12, 2018), it summarizes the Fed. Cir. panel’s difficulties in explaining its affirmance of the PTAB decision invalidating Yeda’s patents on a regimen for the administration of Copaxone. I am not going to comment on the merits of the obviousness rejection on appeal here, except to note that there was a lot of prior art in this area and some of it was close to the claimed regimen, which recited, essentially, administering six 40 mg doses over two weeks.

The prior art wasn’t the problem faced by the panel but, rather, that two publications were cited by Mylan’s expert and relied upon to some extent by the district court to support the obviousness rejection. These publications appeared after the filing date of Yeda’s patents and were not prior art under any section of 102. Yeda “cried foul”, arguing that the PTAB violated s. 311(b) by relying on these non-prior art publications.

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The Abstract Idea Defense in a Patent Infringement Suit Jumped the Shark in Nike v Puma

Jumped the SharkGuest Post from Janal Kalis.

Nike sued Puma for infringing its fly knit shoes.  Puma filed a motion to dismiss because the patents asserted by Nike are directed to an abstract idea.  As can be seen below, the Nike claims clearly are directed to a SHOE!!!!  The judge in the case denied Puma’s motion this week.  A bit of sanity in a patent world gone mad.

9078488:

  1. An article of footwear including an upper and a sole structure attached to the upper, the upper incorporating a knitted component formed of unitary knit construction, the knitted component comprising: at least one lenticular knit structure including a first portion and a second portion disposed on opposite sides of the lenticular knit structure; and a base portion disposed adjacent to the at least one lenticular knit structure; wherein the at least one lenticular knit structure extends away from the base portion on an exterior surface of the upper; and wherein the first portion of the at least one lenticular knit structure is associated with a first visual effect when the upper is viewed from a first viewing angle and the second portion of the at least one lenticular knit structure is associated with a second visual effect when the upper is viewed from a second viewing angle that is different than the first viewing angle.

8266749:

  1. A method of manufacturing an article of footwear, the method comprising: simultaneously knitting a textile element with a surrounding textile structure, the knitted textile element having at least one knitted texture that differs from a knitted texture in the surrounding knitted textile structure; removing the knitted textile element from the surrounding knitted textile structure; incorporating the knitted textile element into the article of footwear.

7637032:

  1. An article of footwear, comprising: an upper member substantially constructed from textile material, wherein the upper member includes an exterior portion substantially constructed from knitted textile material, the exterior portion including a first region having stability ribs integrally formed in the knitted textile material and a second region continuous with the first region, the second region not including stability ribs; wherein a first portion of the first region extends along a forefoot portion of the exterior portion of the upper member and a second portion of the first region extends along a lateral midfoot side of the exterior portion of the upper member; wherein a portion of the second region extends along a junction between the upper member and the sole member and between the first portion of the first region and the second portion of the first region on a lateral midfoot side of the exterior portion of the upper member; and a sole member engaged with the upper member.

Nike’s response to Puma’s motion.

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New Annual Update: Critical Patent Validity Developments in 2017-2018

This is a guest post from the Chisum Patent Academy.

The Academy is pleased to announce the September 2018 publication by Wolters Kluwer Law & Business of the annual Update for Volume I (Patentability and Validity) of the practitioner treatise, Mueller on Patent Law, authored by our co-founder, Janice M. Mueller. See below to review the Highlights.

First published in 2012 and updated annually, Volume I of the Mueller treatise addresses patentability (pre- and post-AIA), drafting patent claims, inventorship, and USPTO prosecution procedures; Volume II covers patent infringement, defenses, remedies, USPTO post-issuance procedures, design patents, and international patenting issues.

The full text of both volumes, including the 2018 Update for Volume I (Patentability and Validity), is available electronically on Wolters Kluwer’s CHEETAH legal research platform.

To review the detailed table of contents incorporating the 2018 Update for Volume I (Patentability and Validity), click here.

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