Posts Tagged ‘biotechnology law’

“Unclean Hands” Doctrine Erases Merck’s Damage Award

Thursday, June 16th, 2016

unclean-handsIn my last post on the district court’s ruling in Gilead v. Merck, I implied that Gilead had convinced the Judge that Merck had employed inequitable conduct (“IC”) in conducting its negotiations with Pharmasset, the company Gilead later purchased to obtain the rights to the HCV drug, sofosuvir or Solvaldi®. However, I was reading and writing at an usually high speed and missed the fact that the judge’s finding was based on the pre-IC, unclean hands defense.

I skipped over the section on Therasense, a 2011 Fed. Cir. decision that redefined the IC doctrine, and missed the Judge’s comments distinguishing the two doctrines. In both opinions, it was noted that the unclean hands defense originated with three early S. Ct. decisions in which the “guilty parties” employed egregious misconduct to obtain their patents. The remedy in each case was to bar the wrongdoers ability to sue for infringement of the patents.

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Supreme Court Rewrites the Law of Enhanced Damages

Tuesday, June 14th, 2016

This is a guest post by Janice M. Mueller of Chisum Patent Academy.

faculty-janice-e1402304436911Today the Supreme Court rewrote the law of enhanced damages for willful patent infringement by issuing a unanimous decision in No. 14-1513, Halo Elecs., Inc. v. Pulse Elecs., Inc., 2016 WL 3221515 (U.S. June 13, 2016), and the companion case, No. 14-1520, Stryker Corp. v. Zimmer, Inc., 2016 WL 3221515 (June 13, 2016). Swept away as “unduly rigid,” “inelastic,” impermissibly encumbering” district courts’ discretion, an “artificial construct,” and simply inconsistent with the text of 35 U.S.C. 284, the Federal Circuit’s elaborate framework for determining whether infringement damages should be enhanced (and reviewing such determinations on appeal), as set forth in In re Seagate Tech. LLC, 479 F.3d 1360 (Fed. Cir. 2007) (en banc) and Bard Peripheral Vascular, Inc. v. W.L. Gor & Assoc., Inc., 682 F.3d 1003 (Fed. Cir. 2012), is no longer good law.

You can read the entire post here.

Merck’s Solvaldi® Patents Unenforceable for Egregious Misconduct

Monday, June 13th, 2016

gavelIn Gilead Sciences, Inc. v. Merck & Co., Inc., Case No. 13-cv-04057-BLE (N.D. Cal., June 6, 2016), Judge Beth Freeman, sitting in equity, found that the record compelled a finding that Merck and its employee “D” had obtained asserted patents 7,105,499 and 8,481,712 after using inequitable conduct. Earlier, the jury had found the patents valid and awarded Merck $200 million in damages for infringement  of this costly drug, that contains the active ingredient sofosbuvir or solvaldi.

Her 65 page order (a copy along is available at the end of this post) rests on the Fed. Cir.’s Therasense decision, which redefined inequitable conduct (“IC”). While most inequitable conduct charges are based on a failure of the patentee to disclose material prior art to the PTO, the court reaffirmed other bad behavior, not necessarily involving prior art:

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New (and Improved?) PTO Guidelines on Biotech Patent-Eligibility

Friday, May 6th, 2016

new-improved-means-development-to-upgrade-product_f1xCRmPdThe PTO has released a new set of life sciences’ examples to teach Examiners how and when to reject claims and, hopefully, teach the patent bar how to write allowable claims. (A copy if found at the end of this post.)

The Guidelines have examples on vaccines, diagnostics, methods of medical treatment and BRCA-type Myriad claims. There are some surprises. Although Ariosa was decided about a year ago, the Guidelines approve of a claim to detecting a marker indicative of a certain disease by detecting whether the marker is present when a plasma sample is contacted with an anti-JUL-1 antibody and detecting any binding (e.g., an ELISA-type assay). The Guidelines justify this position by noting that the steps do not recite any recognized exceptions to s. 101, citing Mayo. This hypothetical claim could have come from Ariosa, which the Office must have made a hard decision to ignore.

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