• The Recent German Compulsory Licensing Case

    In July I published a post titled German Court Affirms Preliminary Grant of Compulsory License for HIV Drug, in which I wrote:
    . . . when Germany’s Federal Supreme Court (the Bundesgerichtshof, or BGH) recently affirmed a ruling of the Federal Patent Court  (Bundespatentgericht) awarding Merck a preliminary injunction to continue selling the HIV drug raltegravir (trade name Isentress), it’s big news.  The story has already been covered in other sources including a recent post by Mark Schweizer on IPKat (which also links to this press release, in German, from the BGH, which hasn’t yet published its judgment); and discussion of the August 31, 2016 decision of the Federal Patent Court can be found in this post on Kluwer Patent Blog from this past March and this post from Mayer Brown’s “All About IP” from this past November.  There’s also a summary of the Federal Patent Court decision by Dr. Uwe Friedrich in the May 2017 issue of Mitteilungen der deutschen Patentanwälten.

    I also noted that the facts giving rise to the dispute appeared to be rather unusual, and recommended not “jumping to the conclusion that the BGH’s recent decision heralds a new era of compulsory licensing in Germany.”
    Anyway, last week Thomas Musmann and Henrik Timmann published a post on the Kluwer Patent Blog reporting that the BGH has now published its judgment, linking to the judgment (in the original German), and summarizing the main points. I confess that I haven’t yet gotten around to reading the actual judgment myself (and today is Labor Day in the U.S., so I probably won’t get around to doing it today either) but I do recommend the Kluwer write-up, and perhaps in due time I’ll have more to say about the case myself.
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  • Board cannot shift burden of proving patentability to applicant, must articulate reasoning

    The Federal Circuit vacated and remanded the Board’s decision, finding that it “failed to adequately articulate its reasoning, erroneously rejected relevant evidence of nonobviousness, and improperly shifted to Stepan the burden of proving patentability.” … The Board cannot shift the burden of proving patentability to the applicant, and must provide sufficient reasoning or explanation for why a skilled artisan would have found the claimed invention obvious, particularly when given evidence of…

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  • Federal Circuit dodges IPR joinder challenge because claims ruled obvious

    Nidec argued that the Board improperly applied the joinder and time bar statutes. The Court held that it need not resolve this dispute because it affirmed the Board’s conclusion that all of the challenged claims are unpatentable as obvious. There was no dispute that the first petition was timely filed, and the joinder issues on appeal related only to the Board’s ruling on anticipation, which ultimately did not affect the outcome of the case… The Federal Circuit does not decide issues which…

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  • Webinar on Influence of PTAB Proceedings on Bio/Pharma Litigation

    McDonnell Boehnen Hulbert & Berghoff LLP will be offering a live webinar entitled “The Continuing Influence of PTAB Proceedings on Bio/Pharma Litigation” on September 19, 2017 from 10:00 am to 11:15 am (CT). In this presentation, MBHB attorneys Alison J. Baldwin and Paula S. Fritsch, Ph.D. will discuss the following topics: • A look at who is using PTAB proceedings to challenge bio/pharma patents; • An analysis of how PTAB proceedings are impacting ANDA and biosimilar litigations; • A review of how bio/pharma patents have fared before the PTAB; • A discussion of strategies for petitioners and patent owners in…

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  • Update on European Patent Law

    Grünecker will be offering a two-day seminar on European Patent Law, including the UPC and Unitary Patent, on September 21-22, 2017 in Munich, Germany. The seminar will offer strategic and practical information on the “opt-out” and will walk through a UPC litigation (mock trial). Those wishing to register can do so here.

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  • Webinar on Safeguarding University IP When Structuring Deals in China

    Technology Transfer Tactics will be offering a webinar entitled “Best Practices for Safeguarding University IP When Structuring Deals in China” on September 19, 2017 from 1:00 to 2:30 pm (Eastern). Dan Harris of Harris Bricken will how to protect your technology and other IP interests from being counterfeited, pirated, or otherwise misappropriated by Chinese companies. The webinar will cover the following topics: • How to choose a good Chinese partner • Identifying your IP assets that need protection • How to structure and draft your China deal: — Licensing IP — Selling IP — Producing goods • How to structure…

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