• The Myth of Patent Quality

    Patent quality is a proxy for attacking patent validity, which has a complex history. Patent critics, particularly market incumbents, obtain a free ride when the bar is set low to attack patent validity. The changes to standards for patent obviousness …

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  • Federal Circuit Finds Velcade Patent Not Obvious Under Lead Compound Analysis

    In Millennium Pharmaceuticals, Inc. v. Sandoz, the Federal Circuit reversed the district court decision that invalidated one of the Orange Book-listed patents covering the anti-cancer drug Velcade. In so doing, the court explained that a novel product with unexpected advantageous properties is not obvious just because the process by which it was made might have…… Continue reading this entry

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  • PTAB Life Sciences Report

    By John Cravero — About the PTAB Life Sciences Report: Each month we will report on developments at the PTAB involving life sciences patents. Pfizer, Inc. v. Biogen, Inc. PTAB Petition: IPR2017-01115; filed March 24, 2017. Patent at Issue: U.S. Patent…

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    brevity, simplicity

    $$ Preferably the piston crown is coated with or constructed from a oxidation catalyst material that improves the consistency and completeness of combustion in the combustion chamber. / ピストンクラウンは、燃焼室での燃焼の一貫性および完全性を改善する酸化触媒材料でコーティングまたは構築されるのが好ましい。(USP8936003)

    $$ For completeness, it is noted that (0,1) is the "whole" body or piston mode. / 完全を期すために、(0,1)は物体「全体」ないしはピストンのモードであることに注意する。(USP8391540)

    $$ Although it is noted that FIG. 4 shows the first and second portions in alignment, the cross-sectional view shows the rim and projection for purposes of completeness. / 図4は、第1および第2部分が位置合わせされた状態を示しているが、断面図は、リムと突起が揃った状態を示している。(USP8360235)

    $$ In such transmissions the completeness of the data is more important than the time it takes to get to its destination, so it is referred in this specification to as "corruption-intolerant". / このような伝送では、データの完全性は、データが送信先へ到達するのにかかる時間よりも重要であり、本明細書ではこれを“破損不寛容”と記載する。(USP6584098)

    $$ They are not very useful, but are mentioned for completeness. (USP6691301)

    $$ The other lens dimensions are provided for completeness. (USP6390624)


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  • Win for Momenta as to 101 and indefiniteness in Lovenox case

    Within Momenta v AMPHASTAR , 2017 U.S. Dist. LEXIS 113713 (21 July 2017) , one has

    Pending before the Court is Momenta’s motion for judgment as a matter of law under Fed. R. Civ. P. 50(a) on Amphastar’s affirmative defenses. Pursuant to Fed. R. Civ. P. 50(a) judgment as a matter of law is warranted when

    a party has been fully heard on an issue during a jury trial and the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue[.]

    Fed. R. Civ. P. 50. Because the only reasonable conclusion as to the defenses of 1) patent eligible subject matter and 2) indefiniteness is that they are inapplicable, with respect to those two defenses, the motion will be allowed.

    The two-step framework for patentable subject matter is described in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 132 S. Ct. 1289, 1293, 182 L. Ed. 2d 321 (2012). First, the Court must determine whether the patent claims are “directed” to a patent-ineligible concept, such as a natural law, natural phenomenon or abstract idea. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 132 S. Ct. at 1296-97). If the claims are not so directed, they are patentable. Id. If the claims are directed to an ineligible concept, then the Court determines whether the elements of the invention “transform” the claims into an application eligible for a patent. Id. Patent eligibility is a question of law. Id.

    Because the ‘886 patent “[is] directed to a new and useful method” of ensuring the quality of enoxaparin and involves a series of laboratory steps rather than a law of nature or abstract idea, this Court concludes that the asserted claims involve patentable subject matter. See CellzDirect, 827 F.3d at 1048. Therefore, with respect to the affirmative defense that the asserted claims do not involve patent eligible subject matter, Momenta’s motion will be allowed.

    With respect to the indefiniteness defense, a patent’s specification must be sufficiently “definite” so as to include at least one claim that “particularly point[s] out and distinctly claim[s] the subject matter which the applicant regards as [the] invention.” 35 U.S.C. § 112 (2002). Pursuant to Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124, 189 L. Ed. 2d 37 (2014),

    [a] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.

    Although “[s]ome modicum of uncertainty” is permissible, the “patent must be precise enough to afford clear notice of what is claimed.” Trusted Knight Corp. v. Int’l Bus. Machines Corp., No. 2016-1510, 2017 U.S. App. LEXIS 3979, 2017 WL 899890, at *3 (Fed. Cir. Mar. 7, 2017) (quoting Nautilus, 134 S. Ct. at 2128-29).

    When a Court evaluates indefiniteness by examining intrinsic evidence, such as the claims and specifications in the patent, indefiniteness is a question of law. Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1378 (Fed. Cir.), cert. denied, 136 S. Ct. 569, 193 L. Ed. 2d 431 (2015).

    Amphastar contends that all of the claims are indefinite because they are limited to “the non naturally occurring sugar associated with peak 9 of FIG. 1″ and there is no specific “FIG. 1″ in the ‘886 patent. Based on the intrinsic evidence, however, the “Figure 1″ in the patent is composed of Fig. 1A and Fig. 1B. The only figure in the patent with peak 9 is FIG. 1A. Moreover, the claims of the patent involve enoxaparin and the Fig. 1A is titled “Lovenox” which is the brand name for enoxaparin. Furthermore, the “Brief Description of the Drawings” in the patent clarifies that FIG. 1A is a “[c]apillary electrophoresis (CE) profile of enoxaparin (Lovenox™)”. Therefore, this Court concludes that the patent “afford[s] clear notice of what is claimed.” Trusted Knight Corp., 2017 U.S. App. LEXIS 3979, 2017 WL 899890, at *3 (quoting Nautilus, 134 S. Ct. at 2128-29) and, with respect to the infiniteness defense, the motion for judgment as a matter of law with be allowed.

    BUT see also


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  • Ge, Pommiès, & Shen on the Beijing High Court’s SEP Guidelines

    This morning on the IAM Blog Jacob Schindler introduces a post by Jill Ge, Charles Pommiès, and David Shen on articles 149 to 153 of the Beijing High Court’s Revised Guidelines for Patent Infringement Determination, which deal with the litigation of SEP cases.  I mentioned these guidelines here recently, as discussed in a post on the Kluwer Patent Blog by Yin Li, Hui Zhang, and James Yang.  Today’s post also links to the guidelines themselves, in Chinese; if any readers can point me in the direction of a translation into English (or French or German), I’d appreciate it.
    According to Ge et al., under article 24(2) of the 2016 Interpretations (II) of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases, “an injunction is not generally available where during the negotiations, (i) a patentee intentionally violates the FRAND obligations, and (ii) the accused infringer is clearly not at fault.”  The newly issued Beijing High Court Guidelines “affirm the majority view in China that SEP-based injunctions should be denied, unless there is wrongdoing on the part of an implementer.  It should be noted that this FRAND defence to injunctions has nothing to do with the competition law.”  In addition, according to the authors, “China has essentially adopted a fault-based analytical framework to assess whether a SEP injunction should be granted” patterned to some degree after the CJEU’s judgment in Huawei v. ZTE, though “[c]ompared to Europe there is a greater onus on the patentee/licensor to act ‘reasonably’.”  In addition, the authors raise questions regarding how Chinese courts will determine whether a party is “at fault for ‘obstructing or delaying the licensing negotiation without justifiable reasons,'” and whether “an offer or counter-offer [is] “clearly unreasonable.”  They also note that under the guidelines if neither party is at fault the implemener should deposit an interim bank guarantee, but that “leaving the amount of payment to be determined by an implementer without checks by the court could be problematic.”
    For readers interested in FRAND/SEP issues, this is essential reading; according to Mr. Schindler’s introduction, there are over 2O SEP cases pending at the Beiing IP Court right now, suggesting that these issues are only going to become more salient in the months to come.  Additionally, as I noted last week, you also might want to register for a free webinar tomorrow hosted by the USPTO and the Federal Circuit Bar Association covering these issues.  Ms. Ge, who as I like to point out is one of my former students, will be one of the speakers.
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