Archive for April, 2010

Therasense To Be Re-Heard En Banc – “I Feel Your Pain”

Wednesday, April 28th, 2010

Monday’s decision by the Federal Circuit to vacate the split panel decision in Therasense, Inc. v. Becton Dickinson & Co., 593 F.3d 1289 (Fed. Cir. 2010) (link at end of post) and rehear the case en banc makes it impossible for me to avoid discussing inequitable conduct in this blog. The Federal Circuit intends to decide some “big picture” issues, and has requested briefing on, inter alia, “Should the materiality-intent-balancing framework for inequitable conduct by modified or replaced?” and “If so, how?” and “Should the balancing materiality and intent standard be abandoned?” These are big questions indeed, and they point up the difficulty of enforcing a duty of candor and good faith standard that depends on deciding if the accused parties acted with specific intent to defraud the system.

Establishing specific intent to withhold 102(b) prior art in order to get claims allowed has pushed patent litigation into something resembling a TV crime drama. I have read the Therasense panel opinion twice now and I keep expecting to hit a paragraph in which the majority recounts that the patent attorney broke down on the stand, crying, and confessed his sins. The opinion is painful to read on a number of levels, but particularly the sections where the panel infers specific intent from the trial court’s findings that the testimony by the patent attorney and the Director of R&D for Abbott were not credible and evidenced an intent to deceive (not just a bad call on relevance).


Breaking News: Teeth Chatter In Hell – Vatican Funds To Support Stem Cell Research!

Friday, April 23rd, 2010

The Vatican and the University of Maryland School of Medicine recently announced that the Vatican will contribute about $3M to fund research on stem cells derived from adult intestinal tissue. The funds will be used to support research at the Vatican’s Rome hospital. Of course, the research will not involve embryonic stem cells, and the Pope has had positive things to say in the past about stem cell research limited to “adult stem cells”. Read NPR story.

A map of the patent landscape in this area would have more hills than Rome, (Osiris’ extensive portfolio is based on adult stem cells), so this news may provide a further, somewhat blessed, incentive for you to attend the Stem Cell Patents Webinar on April 28th, that is the subject of the post below.

Three million dollars is not a lot of money as support for this cutting edge research, but it is more than the State of Minnesota has found to support stem cell research, but multipotent adult stems were discovered at the University of Minnesota!

Stem Cell Patents Webinar and BIO Int’l Convention Symposium

Monday, April 19th, 2010

Patent Claims Coverage Webinar: Stem Cell Industry – Osiris Therapeutics – Amgen’s EPO – Wed., April 28, 12:00PM – 12:50PM CDT

Sunlight Research™ invites you to attend a Stem Cell Industry Patent Claims Coverage webinar presented by Robin A. Chadwick, Ph.D., Shareholder and Registered Patent Attorney, Schwegman, Lundberg & Woessner, P.A.

This webinar, scheduled for Wednesday, April 28 at 12:00PM CDT, will highlight patent claims coverage in the Stem Cell Industry and areas of opportunity. Special attention will be paid to the portfolios of Osiris Therapeutics and Amgen’s EPO portfolio.

Chief Scientists, R&D Managers, Scientific Advisors, Business and Corporate Development, Licensing Executives, Senior Management, Venture Capitalists and Industry Analysts can all benefit from the information that will be presented.

The information is available as three separate patent reports: Stem Cell Industry, Osiris Therapeutics and Amgen’s EPO.

Sponsored by Sunlight Research: The Number One Source for Patent Analysis. Click here to register.


BIO International Convention – Chicago, IL – McCormick Place, May 3 – 6, 2010,- Chicago

Sunlight and Schwegman, Lundberg & Woessner, P.A. are the sole sponsors of the BIO/Association of University Technology Managers (AUTM)-hosted BIO Technology Transfer Symposium to be held at 2:00-5:30pm CDT, May 4, 2010 at the Hyatt Regency – McCormick Place in the Regency Ballroom B. Seating is limited. To RSVP and for additional information, email

Sunlight and Schwegman, Lundberg & Woessner, P.A. are also co-sponsors ofthe European Patent Office (EPO)BIO IP Counsels’ Reception from 6:30-8:00pm, CDT, May 4th, 2010 at the Hyatt Regency – Chicago (151 E. Wacker Drive) Crystal Ballroom. Enjoy drinks and light fare, learn more about the BIO IP Counsels’ Committee and meet in-house counsels,representatives from international patent offices, universities, industry and law firms in an informal happy-hour setting.

Both of these events will be held during the BIO International Convention at McCormick Place in Chicago, Illinois, May 3-6, 2010. In addition, Convention attendees are invited to visit Sunlight’s booth P-12 in the BIOPark section of the main Exhibition Hall.

Sunlight will also show attendees how to use its claims-level patent analyses as cost-effective decision support tools to address stem cells, follow-on biologics and other life sciences sectors, in the BIOPark Theatre at 4:00pm CDT on Wednesday, May 5, 2010.

About Sunlight Research, LLC
Sunlight Research is the premier source for up-to-date Patent Data Analysis, Patent Claims Coverage Reports, Intellectual Property Market Research, Non-Practicing Entity Patent Reports and Interactive Freedom To Operate databases. Sunlight provides timely, in-depth and actionable patent analysis reports that are easily accessible and cost effective.

About Schwegman, Lundberg & Woessner, P.A.
Schwegman, Lundberg & Woessner, P.A. focuses on creating value for their clients by helping them obtain, evaluate and develop patents. The firm serves an international roster of clients that includes multinational corporations, middle-market businesses, start-ups, universities and individuals. SLW has offices in Minneapolis, Silicon Valley and Austin.

About BIO
BIO represents more than 1,200 biotechnology companies, academic institutions, state biotechnology centers and related organizations across the United States and in more than 30 other nations. BIO members are involved in the research and development of innovative healthcare, agricultural, industrial and environmental biotechnology products.

About Association of University Technology Managers
AUTM’s global network of members come from more than 350 universities, research institutions, teaching hospitals and government agencies as well as hundreds of companies involved with managing and licensing innovations derived from academic and nonprofit research.

The Return Of The Magnificent Prosecution Specialists Or Just More “QA”?

Thursday, April 15th, 2010

The USPTO recently announced the creation of an ombudsman program to resolve applicant/examiner logjams in all of the Tech Centers. This is a move that the Office (and practitioners) have needed badly for a number of years, ever since the demise of the “Strong” Patent Prosecution Specialists in the pharma/biotech groups (1600/1800). Patent Prosecution Specialists like Richard Schwartz, Brian Stanton (now at NIH), and Margaret Parr were given real power to move stalled applications forward by mediating amendments acceptable to both sides or, in some cases, by simply telling the Examiner that he/she was wrong and to allow the claims in question. However, if this is simply a return to the “Weak” QA Specialist program that was no more than window dressing on the no-Patent Office, why bother? We need change we can believe in, not a PTO where Examiners are encouraged to just say “No”!