INO v. Praxair – Time for the Supreme Court to Step Up to the Plate?

Posted on March 16, 2020 by Warren Woessner

Before you read this post, please back up and read my post of September 3, 2019 which discusses the Fed. Cir.’s ruling that the claims of U.S. Pat. No. 8,794,742 are patent-ineligible as attempts to claim a natural phenomenon. The claims are directed to reducing the risk that inhalation of nitrous oxide (“NO”) by neonatal patients identified as having hypoxic respiratory failure, and who also have left ventricular dysfunction (“LVD”) will lead to pulmonary edema. The claims essentially recite dividing a group of such patients into two groups. The patients who do not have LVD are administered the standard dose of NO, while the at-risk patients are not treated with NO.

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Samsung v. Prisua – Fed. Cir. Tries to Eliminate IPR Catch-22

Posted on March 12, 2020 by Warren Woessner

The Fed. Cir. panel decision in Samsung Elec. Amer., Inc. v. Prisua Engineering Corp., Appeal No. 2019-1169, 2019-1260 (Fed. Cir., Feb. 4, 2020) flew under my blogging radar for some time, but since Prisua petitioned for rehearing en banc on March 5th, I haven’t been able to get the decision out of my IP head. The panel decision is an attempt to resolve an inherent Catch-22 situation in which the Board (“PTAB”) ruled that it could not evaluate the obviousness or anticipation of all of the challenged claims in Prisua’s U.S. Pat. No. 8,650.519, because the PTAB could not construe the claims.

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Advocacy vs. Candor Paves the Road to Inequitable Conduct

Posted on March 9, 2020 by Warren Woessner

In GS Cleantech Corp. v. Adkins Energy LLC, the Fed. Cir. upheld a finding of an on-sale bar to patenting and also found that the main prosecuting attorney committed inequitable conduct by providing false or misleading information to the PTO. To provide a law review analysis of the opinion (appeal no. 2016-2231, 2017-1838 (Fed. Cir., March 2, 2020) would require more pages of text than this 39 page opinion, and I will spare you that. At least the invention was a not-overly-complex method of recovering oil from a dry mill ethanol plant’s by product called thin stillage.

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Method of Treatment Efficacy Benchmarks Avoid Inherency Attack

Posted on February 6, 2020 by Warren Woessner

In Galderma Labs. v. Teva Pharm. USA, Inc., Appeal Nos. 2019-2396 and 2020-1213 (Fed. Cir,. January 29, 2020), a Fed. Cir. panel of Judges Moore, O’Malley and Stoll reversed a district court finding that three Galderma patents (US Pat. Nos. 9,809,587, 9,223,117 and 9,223,118) on methods for treating inflammatory lesions of acne with a 1% ivermectin formulation, Soolantra© were invalid as inherently anticipated by a patent (McDaniel) disclosing the use of a 1-5% ivermectin formulation to treat acne, that was enabled “as to the formulation” by a patent disclosing the Soolantra© composition (Manetta).

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