Posts Tagged ‘biotechnology law’

Promega v. Life Technologies – “Too Much Of Nothing?”

Tuesday, January 20th, 2015

Although much more attention has been focused on the portion of this recent Fed. Cir. decision that held a defendant could “induce itself” into infringement under s. 271(1)(f), by sending one part of a kit to be assembled abroad, the s. 112, para. 1 portion of the decision deserves some attention. This is particularly true in the written description requirement (WDR) era the biotech industry has been living in since the Ariad decision enshrined the WDR as an effective claim killer.  Promega Corp. v. Life Technologies, App. No 2013, -1029, -1376 (Fed. Cir., December 15, 2014) (a copy is available at the end of this post).

Trying to make a long decision short, Promega asserted patents claiming kits having primers that would co-amplify a set of at least three STR loci wherein the set of loci are selected from the sets of loci consisting of D3S1539, D19S253…etc. As you might imagine, Life Technologies, these claims were treated as closed, and Life Technologies easily avoided infringing them.

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Chisum Patent Academy Close To Full

Monday, January 5th, 2015

The Chisum Patent Academy has three seats remaining in its March 5-6, 2015 Advanced Patent Law Seminar in Cincinnati, Ohio. The two-day roundtable seminar is limited to a total of ten participants to maximize opportunities for interactive discussion and debate.  All sessions are led by treatise authors and educators Donald Chisum and Janice Mueller. Coverage focuses on recent significant patent decisions of the Federal Circuit and U.S. Supreme Court. Topics currently planned for discussion include:

  • The Supreme Court’s Alice Corp. decision on patent-eligible subject matter and Federal Circuit decisions applying Alice Corp.;
  • The Supreme Court’s grant of certiorari in Commil USA concerning the intent requirement for inducing infringement;
  • The Supreme Court’s grant of certiorari in Kimble v. Marvel to review the propriety of post-patent expiration royalties;
  • The Supreme Court’s pending decision in Teva v. Sandoz on standard of review for patent claim construction;
  • The Federal Circuit’s grant of en banc review in SCA Hygiene to determine whether the Supreme Court’s Petrella decision changed the law of laches as a defense to patent infringement;
  • “Patent Practice Gone Wrong”:  Lessons from Patent Malpractice, Exceptional Case and Rule 11 Sanctions, and Inequitable Conduct Cases;
  • Patent Claim Construction and Definiteness in the Wake of Nautilus (and Anticipating Teva); and
  • Inter Partes Review: Two-Year Snapshot and Lessons from Case Studies.

No advance preparation is expected or required. The Supreme Court of Ohio Commission on Continuing Legal Education has approved the seminar for 12.0 hours CLE instruction.

For additional details on the venue, topics, and registration form, click here or e-mail info@chisum.com

 

Mayo Meet Alice Meet Myriad – Fed. Cir. Appreciates “Abstract Art”

Thursday, December 18th, 2014

On December 20th, a panel of the Fed. Cir. of Judges Dyk, Clevinger and Prost – Dyk writing – found that six claims in Myriad’s dwindling arsenal of BRACA1 and 2 patents were invalid as claiming non-statutory subject matter. (University of Utah Res. Foundation et al. v. Ambry Genetics Corp., Appeal No. 2014-1361, -1366 (Fed. Cir., Dec. 20, 2014)). (A copy of the decision is found at the end of this post.) The decision makes more sense than some commentators have given it credit for, but it still reads like the plot of the last Matrix installment.

First, the panel invalidated four composition of matter claims directed to ssDNA segments useful to amplify the BRACA genes or portions thereof, when used as PCR primers, or to identify specific areas of the genes if used as probes. These were claims in US Pat. Nos. 5,747,282 and 5,837,492.

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Supreme Court to Review Post-Expiration Date Royalties in Kimble v. Marvell

Friday, December 12th, 2014

Despite a negative brief from the Solicitor General’s Office, on Friday the Supreme Court granted cert. in Kimbell v. Marvell, 727 F.3d 856 (9th Cir. 2013) (a copy can be found at the end of this post). The single question presented is “Whether the Court should overrule Brulotte v. Thys” (379 U.S. 29 (1964)). This decision held that a patentee’s use of a royalty agreement extending royalty payments beyond the expiration date of the patent is unlawful per se. This decision had, in some cases, been extended to void licensee’s contract obligations when “hybrid royalty payments” where involved, e.g., when royalties due to both the use of patent and non-patent rights were involved but had not be clearly delineated, and in the case of deferred payments for profits obtained before patent expiration, but paid after expiration. On the other hand, cases like Aronson, which provided for reduced royalties after a fixed period of time if no patent ever issued, were found to be enforceable, since such agreements did not involve patent licenses.

Brulotte has been widely criticized since it issued – after all, expired patents can be practiced for free by any and all – unless a licensee sees something of value and contracts away its rights – and the Supreme Court may well have taken this case due to the cogent summary of the issues by the 9th Circuit. The decision, due in 2015, will be of particular interest to the “patent and licensing offices” of universities, which have long struggled with questions of best practices in obtaining some royalty stream from early-stage technologies whose maximum earning potential may not be realized until the patents covering them have expired, or are about to expire.

Kimble v Marvel