Upcoming Webinar: Top 5 Court Decisions Impacting Future IP Litigation

Posted on May 2, 2018 by Warren Woessner

Top 5 Court Decisions WebinarWithin the last few years, the Federal Circuit and Supreme Court have handed down decisions that altered the landscape of both patent prosecution and enforcement, ranging from venue and attorneys’ fees to the standards for obviousness and patent eligibility. Please join me for a complimentary webinar on May 17, as I take a look back at the five most important IP decisions of 2017-2018 and evaluate their effect on practice in the life sciences arena.

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Fed. Cir. Affirms Unclean Hands Defense in Gilead v. Merck

Posted on April 30, 2018 by Warren Woessner

Unclean Hands Doctrine On April 25th, a Fed. Cir. panel of Judges Taranto, Clevenger and Chen affirmed the unenforceability of two Merck patents covering a drug presently marketed as Sovaldi(r) to treat hepatitis C, sofosbuvir. Gilead Sciences, Inc. v. Merck & Co., Appeal Nos. 2016-2302, 2016-2615 (Fed. Cir., April 25, 2007).

For a detailed discussion of the background and the rationale of the lower court decision, please re-read my posts of June 13, 2016 and June 16, 2016. The district court found that Merck had unclean hands, precluding patent enforcement against Gilead, based on its findings of both pre-litigation business misconduct and litigation misconduct attributable to Merck.

Discussing the law of unclean hands, the Fed. Cir. panel made it clear that “this is [not] a case involving alleged deficiencies in communications with the PTO during patent prosecution” [citing Therasense]…we see no genuine issue about the governing legal standard, but only its application. Footnote 3 reads:  Continue reading →

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Supreme Court Decides Oil States – Inter Partes Review Does Not Violate Article III or the 7th Amendment

Posted on April 24, 2018 by Warren Woessner

justice scaleThe Supreme Court issued its long-awaited opinion in Oil States Energy Services v. Greene’s Energy Group, Appeal No. 16-712 (April 24, 2018), holding 7/2 that inter parties review was an appropriate exercise of the power of Congress to assign adjudication of public rights to the USPTO, and is not required to assign such adjudications to Article III courts for resolution by a jury trial. To reach this conclusion, the Court held that the grant of a patent falls within the public rights doctrine, as a matter “arising between the government and others” and that IPR is “simply a reconsideration of that grant” that Congress has reserved to the PTO.

The Court minimized the procedures unique to IPR by reasoning that IPR involves the same interests as the original grant of a patent, and analogized the grant or cancellation of a patent to the qualification of other “public franchises” by Congress.  Continue reading →

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USPTO Memorandum Seeks to Clarify “Inventive Concept” Requirement

Posted on April 20, 2018 by Warren Woessner

On April 19, 2018, the USPTO released a Memorandum from Robert Bahr, The Deputy Commissioner for Patent Examination Policy, to the Examiners,  that summarized the support required for a finding whether or not a claim directed to a judicial exception to s. 101 under Step 2A of the analysis chart of MPEP 2106 – a natural phenomenon, an abstract idea or a product of nature – contains additional elements that meet the Step 2B requirement that, taken alone or in combination, represent well-understood, routine, conventional activity.

The Memorandum was prompted by the recent decision in Berkheimer v. HP, 881 F.3d 1360 (Fed. Cir. 2018) I which the court held the Step 2B decision is a (disputed) factual issue that precludes resolution by summary judgment (or otherwise at the pleadings stage). In Berkheimer, while most of the claims directed to aspects of a “digital asset management system” were ineligible as directed to abstract ideas that did not recite “purported improvements” such as “reducing redundancy”, 4 claims did recite said improvements, and so raised an issue of material fact as to whether or not these improvements were well-understood, routine, conventional activity  previously known in the industry.

The Memorandum purports to clarify the scope of the factual inquiry that an Examiner must conduct in order to find that the claim element(s,) other than the abstract idea product or phenomenon of nature, represent well-understood, routine conventional activity. (The Office’s “markedly different” test for identifying a “natural product(s)” recited in a claim was not discussed). Continue reading →

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