• IP Due Diligence in the Life Sciences: Key Considerations for 2019 – Part I

    The success of a life science product, and thereby the company, rests heavily upon a combination of patent protection, regulatory exclusivity and product life cycle management. A company’s ability to formulate and articulate an integrated strategy is critical to obtaining investments, strategic partnerships and market success. In this two-part series, we will discuss recent judicial developments that affect life science companies’ IP strategies and also outline the four basic principles of an…

    Continue Reading ...
  • IP Due Diligence in the Life Sciences: Key Considerations for 2019 – Part I

    The success of a life science product, and thereby the company, rests heavily upon a combination of patent protection, regulatory exclusivity and product life cycle management. A company’s ability to formulate and articulate an integrated strategy is critical to obtaining investments, strategic partnerships and market success. In this two-part series, we will discuss recent judicial developments that affect life science companies’ IP strategies and also outline the four basic principles of an…

    Continue Reading ...
  • WesternGeco L.L.C. v. ION Geophysical Corp. (Fed. Cir. 2019)

    By Donald Zuhn –- Last June, the Supreme Court determined that $93.4 million in lost foreign profits awarded to WesternGeco L.L.C. for infringement under 35 U.S.C. § 271(f)(2) was a permissible domestic application of 35 U.S.C. § 284, and the Court therefore reversed the Federal Circuit’s reversal of the award of lost profits damages and remanded the case (see “WesternGeco LLC v. ION Geophysical Corp. (2018)”). Earlier this month, the Federal Circuit decided, given the intervening invalidation of four of the five asserted patent claims by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, to remand the…

    Continue Reading ...
  • すぎると / すぎれば

                            目次はこちら

    すぎると / すぎれば

    $$ If there is too great a concentration of exhaust gases in combustion chamber 120, combustion will not be possible, since the…

    Continue Reading ...
  • District of Delaware Makes it Harder to Corner the Market on Antibody Patents in MorphoSys v. Janssen

    Patents covering an antibody are often claimed by the antibody’s function (the residues where it binds to the antigen) rather than its structure (amino-acid sequence). This tactic can successfully cast a very wide net of patent protection over potentially millions of different antibodies. In doing so, even if the patent holder’s own antibodies never make it out of the laboratory, the patents can nevertheless corner the market on intellectual property covering a new class of inhibitors. The risk…

    Continue Reading ...
  • Pro se inventor loses on system to send compliance reminders to non-compliant patients as needed

    Mere attorney argument fails in Karpf case:


    Finally, we conclude that Karpf’s claim of a long-felt,
    unmet need for improved patient compliance technology
    does not render claims 23 and 25 nonobvious. Karpf
    provides extensive documentation showing that patient
    non-compliance is a prevalent and costly issue. However,
    he does not provide evidence, other than attorney argument,
    that the claimed invention meets that need. See In
    re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)
    (“For objective evidence of secondary considerations to be
    accorded substantial weight, its proponent must establish
    a nexus between the evidence and the merits of the
    claimed invention.”) (citation omitted). Thus, we conclude
    that the nexus between the claimed invention and the
    purported long-felt, unmet need is too attenuated to
    provide a persuasive rationale for nonobviousness

    Continue Reading ...
  • The CAFC analyzes the “of another” portion within 35 U.S.C. § 102(e) in Duncan Parking v. IPS

    This CAFC decision in Duncan Parking involved combined reviews
    of a Board and of a district court decision:


    We reverse the Board’s decision in the 1205 Appeal
    that claims 1–5 and 7–10 of the ’310 patent are not unpatentable as anticipated.
    We affirm the district court’s
    decision in the 1360 Appeal granting summary judgment
    of noninfringement of the ’310 patent. Finally, we vacate
    the district court’s decision in the 1360 Appeal granting
    summary judgment of noninfringement of the ’054 patent
    because the district court erred in construing the claims
    too narrowly, and we remand the case to the district court
    for further proceedings consistent with the claim construction we set forth.

    The technology involved parking meters. IPS is the patentee
    with CEO Dave King and Chief Technical Officer
    Alexander Schwarz.

    Of the anticipation issue:


    Meanwhile, shortly after IPS filed its complaint, DPT
    petitioned in the U.S. Patent and Trademark Office for
    inter partes review of claims 1–5 and 7–10 of the ’310
    patent. The Board instituted a review on the ground that
    the ’054 patent anticipates the ’310 patent under
    35 U.S.C. § 102(e). After institution, IPS chose not to
    dispute whether, on the merits, the ’054 patent anticipates the ’310 patent claims.

    IPS instead argued in its
    Patent Owner Response that the anticipating portions of
    the ’054 patent are solely King’s invention, not that “of
    another” under 35 U.S.C. § 102(e),
    and therefore cannot
    be applied as prior art against the ’310 patent claims. To
    support its argument that King alone conceived the
    relevant disclosure, IPS submitted declarations from
    King, Schwarz, and David Jones—an engineer from D+I
    and a named inventor of the ’310 patent—along with
    contemporaneous documents reflecting the invention’s
    development from 2003 to 2005. In the Petitioner’s Reply,
    DPT argued that the ’054 patent is prior art because
    Schwarz conceived at least a portion of the ’054 patent’s
    anticipating disclosure.

    The CAFC wrote:


    We must review here whether the Board erred in concluding that
    the applied portions of the ’054 patent were
    invented by King alone and not by King and Schwarz
    jointly. See In re DeBaun, 687 F.2d 459, 463 (CCPA
    1982). If Schwarz is a joint inventor of the anticipating
    disclosure, then it is “by another” for the purposes of §
    102(e). In re Land, 368 F.2d 866, 879 (CCPA 1966) (“[A]n
    invention made jointly by A & B cannot be the sole invention of A or B . . . .”).
    To be a joint inventor, one must:
    (1) contribute in some significant manner to the
    conception or reduction to practice of the invention, (2)
    make a contribution to the claimed invention that is not insignificant in quality, when that
    contribution is measured against the dimension of
    the full invention, and (3) do more than merely
    explain to the real inventors well-known concepts
    and/or the current state of the art.
    In re VerHoef, 888 F.3d 1362, 1366 (Fed. Cir. 2018)
    (quoting Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir.
    1998)). “The law of inventorship does not hinge coinventorship status
    on whether a person contributed to
    the conception of all of the limitations in any one claim of
    the patent. Rather, the law requires only that a coinventor
    make a contribution to the conception of the
    subject matter of the claim.” Eli Lilly & Co. v. Aradigm
    Corp., 376 F.3d 1352, 1361–62 (Fed. Cir. 2004); see Fina
    Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1474 (Fed. Cir.
    1997).

    Thus, to decide whether a reference patent is “by another”
    for the purposes of 35 U.S.C. § 102(e), the Board
    must (1) determine what portions of the reference patent
    were relied on as prior art to anticipate the claim limitations at issue,
    (2) evaluate the degree to which those
    portions were conceived “by another,” and (3) decide
    whether that other person’s contribution is significant
    enough, when measured against the full anticipating
    disclosure, to render him a joint inventor of the applied
    portions of the reference patent. We conclude that the
    Board erred in not holding that King and Schwarz are
    joint inventors of the anticipating disclosure.

    Of a separate doctrine of equivalents argument made
    by patentee:


    We agree with DPT that the Liberty Meter’s keypad
    does not work in the same way as the claimed invention.
    Under the doctrine of equivalents, a product or process
    that does not literally infringe a patent claim may nevertheless
    be held to infringe “if it performs substantially the
    same function in substantially the same way to obtain the
    same result.” Graver Tank & Mfg. Co. v. Linde Air Prods.
    Co., 339 U.S. 605, 608 (1950) (quoting Sanitary Refrigerator Co. v. Winters,
    280 U.S. 30, 42 (1929)). But the doctrine of equivalents
    cannot be used to effectively read out
    a claim limitation, Primos, Inc. v. Hunter’s Specialties,
    Inc., 451 F.3d 841, 850 (Fed. Cir. 2006), because the
    public has a right to rely on the language of patent claims.
    See London v. Carson Pirie Scott & Co., 946 F.2d 1534,
    1538 (Fed. Cir. 1991) (“[I]f the public comes to believe (or
    fear) that the language of patent claims can never be
    relied on, and that the doctrine of equivalents is simply
    the second prong of every infringement charge, regularly
    available to extend protection beyond the scope of the
    claims, then claims will cease to serve their intended
    purpose.”).

    Continue Reading ...
  • The CAFC analyzes the “of another” portion within 35 U.S.C. § 102(e) in Duncan Parking v. IPS

    This CAFC decision involved combined reviews of a Board and a district court decision:


    We reverse the Board’s decision in the 1205 Appeal
    that claims 1–5 and 7–10 of the ’310 patent are not unpatentable as anticipated.
    We affirm the district court’s
    decision in the 1360 Appeal granting summary judgment
    of noninfringement of the ’310 patent. Finally, we vacate
    the district court’s decision in the 1360 Appeal granting
    summary judgment of noninfringement of the ’054 patent
    because the district court erred in construing the claims
    too narrowly, and we remand the case to the district court
    for further proceedings consistent with the claim construction we set forth.

    The technology involved parking meters.

    Of the anticipation issue:


    Meanwhile, shortly after IPS filed its complaint, DPT
    petitioned in the U.S. Patent and Trademark Office for
    inter partes review of claims 1–5 and 7–10 of the ’310
    patent. The Board instituted a review on the ground that
    the ’054 patent anticipates the ’310 patent under
    35 U.S.C. § 102(e). After institution, IPS chose not to
    dispute whether, on the merits, the ’054 patent anticipates the ’310 patent claims.
    IPS instead argued in its
    Patent Owner Response that the anticipating portions of
    the ’054 patent are solely King’s invention, not that “of
    another” under 35 U.S.C. § 102(e), and therefore cannot
    be applied as prior art against the ’310 patent claims. To
    support its argument that King alone conceived the
    relevant disclosure, IPS submitted declarations from
    King, Schwarz, and David Jones—an engineer from D+I
    and a named inventor of the ’310 patent—along with
    contemporaneous documents reflecting the invention’s
    development from 2003 to 2005. In the Petitioner’s Reply,
    DPT argued that the ’054 patent is prior art because
    Schwarz conceived at least a portion of the ’054 patent’s
    anticipating disclosure.

    The CAFC wrote:


    We must review here whether the Board erred in concluding that
    the applied portions of the ’054 patent were
    invented by King alone and not by King and Schwarz
    jointly. See In re DeBaun, 687 F.2d 459, 463 (CCPA
    1982). If Schwarz is a joint inventor of the anticipating
    disclosure, then it is “by another” for the purposes of §
    102(e). In re Land, 368 F.2d 866, 879 (CCPA 1966) (“[A]n
    invention made jointly by A & B cannot be the sole invention of A or B . . . .”).
    To be a joint inventor, one must:
    (1) contribute in some significant manner to the
    conception or reduction to practice of the invention, (2)
    make a contribution to the claimed invention that is not insignificant in quality, when that
    contribution is measured against the dimension of
    the full invention, and (3) do more than merely
    explain to the real inventors well-known concepts
    and/or the current state of the art.
    In re VerHoef, 888 F.3d 1362, 1366 (Fed. Cir. 2018)
    (quoting Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir.
    1998)). “The law of inventorship does not hinge coinventorship status
    on whether a person contributed to
    the conception of all of the limitations in any one claim of
    the patent. Rather, the law requires only that a coinventor
    make a contribution to the conception of the
    subject matter of the claim.” Eli Lilly & Co. v. Aradigm
    Corp., 376 F.3d 1352, 1361–62 (Fed. Cir. 2004); see Fina
    Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1474 (Fed. Cir.
    1997).
    Thus, to decide whether a reference patent is “by another”
    for the purposes of 35 U.S.C. § 102(e), the Board
    must (1) determine what portions of the reference patent
    were relied on as prior art to anticipate the claim limitations at issue,
    (2) evaluate the degree to which those
    portions were conceived “by another,” and (3) decide
    whether that other person’s contribution is significant
    enough, when measured against the full anticipating
    disclosure, to render him a joint inventor of the applied
    portions of the reference patent. We conclude that the
    Board erred in not holding that King and Schwarz are
    joint inventors of the anticipating disclosure.

    Continue Reading ...
  • Canada Patent Law Changes Are Bad News for Patent Owners

    The effects of changes made to Canada’s patent law at the end of 2018 won’t be fully clear for some time, but Canadian patent owners and those looking to expand patent strategies into Canada may want to take heed.

    On December 13, 2018, the Governor General of Canada gave royal assent to pass Bill C-86, known as the Budget Implementation Act, into law. The legislation makes several changes to Canadian patent law relating to how patent and trademark infringement cases are litigated in Canadian…

    Continue Reading ...