• MBHB & Patent Docs Programs on Biopharma Patent Law

    McDonnell Boehnen Hulbert & Berghoff LLP and Patent Docs will be hosting two onsite CLE programs on “Recent Developments in Biopharma Patent Law” from 9:30 am to 1:30 pm (PT) on April 23, 2019 in San Diego, CA (Hyatt Regency La Jolla at Aventine) and on April 24, 2019 in Burlingame, CA (Hyatt Regency San Francisco Airport). MBHB attorneys and Patent Docs authors Kevin Noonan and Donald Zuhn, and MBHB attorneys Josh Rich, Lisa Hillman, Sarah Fendrick, John Conour, Nate Chongsiriwatana, and Nicole Grimm will provide presentations on the following topics: • Updates on Subject Matter Eligibility Analysis • Patenting…

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  • IPO Webinar on Appeals from PTAB

    The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled “Standing to Appeal from the PTAB” on April 4, 2019 from 2:00 to 3:00 pm (ET). Neal Dahiya of Bristol-Myers Squibb Company; Michael Flibbert of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Michael Rosato of Wilson Sonsini Goodrich & Rosati will also address strategies for obtaining, and opposing, appellate standing. The panel will discuss: • The argument that injury from IPR estoppel in future district court litigation, after a losing challenge, is enough to create standing; • The theory that standing is created after an unsuccessful challenge because…

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  • ACI Advanced Summit on Life Sciences Patents Conference

    American Conference Institute (ACI) will be holding its 17th Advanced Summit on Life Sciences Patents conference on May 16-17, 2019 in New York, NY. The conference will offer presentations on the following topics: • Patenting strategies for U.S. and Europe • What’s new at the PTAB? • The “new” § 101 landscape in the PTO and District Courts • Obviousness-type double patenting • Printed publication standards at the PTAB • FTO and avoiding future infringement • Prolonging patent lifecycles in US, EP, and JP • Revisiting the Doctrine of Equivalence • Antibody patent review: global perspectives • Applying the written…

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  • Program on the Blockchain

    The Intellectual Property Law Association of Chicago (IPLAC) Corporate Committee and Advertising and Digital Committee will be presenting a program entitled “Can My Blockchain Do That? A Discussion of Blockchain Beyond Cryptocurrency” on April 4, 2019 …

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    $$ All gaseous exhausts are passed through the wet scrubber and through the purification system. / ガス状排出物は、全量が湿式ス…

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  • UKIPO Invalidates Babybel Cheese Shape Mark

    Fromageries Bel, owners of cheese brands including Boursin, Leerdammer and The Laughing Cow, have been dealt a blow by the UK Intellectual Property Office (UKIPO), with their UK trademark registration for the shape of the company’s popular Babybel cheese having been declared invalid. It has been possible to register non-traditional trademarks, including colors and 3D shapes, for many years. However, the requirements for registration of these types of marks have changed substantially since they…

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  • UKIPO Invalidates Babybel Cheese Shape Mark

    Fromageries Bel, owners of cheese brands including Boursin, Leerdammer and The Laughing Cow, have been dealt a blow by the UK Intellectual Property Office (UKIPO), with their UK trademark registration for the shape of the company’s popular Babybel cheese having been declared invalid. It has been possible to register non-traditional trademarks, including colors and 3D shapes, for many years. However, the requirements for registration of these types of marks have changed substantially since they…

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  • Other Barks & Bites: New Register of Copyrights, Win for Qualcomm at ITC and Big Tech Up in Arms Over New EU Copyright Rules

    This week in Other Barks & Bites: Karyn Temple is appointed Register of Copyrights; the International Trade Commission recommends excluding certain iPhone models for infringing Qualcomm patent claims; the EU approves new copyright rules which will affect online media platforms; Senators Tillis and Coons move forward with stakeholder discussions on a legislative fix to Section 101 of patent law; Peloton responds to copyright infringement suit by dropping online cycling classes; Amazon adds…

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  • ND Cal acted improperly in Global Tek case in restricting evidence

    The outcome was vacating/reversal of ND Cal:

    Following a jury trial finding Sealant Systems International
    and ITW Global Tire Repair (collectively, “SSI”)
    liable to TEK Corporation and TEK Global, S.R.L. (collectively,
    “TEK”) for infringement of U.S. Patent No.
    7,789,110 (“the ’110 patent”), SSI appeals several pre- and
    post-judgment orders from the United States District
    Court for the Northern District of California. Specifically,
    SSI appeals the district court’s claim construction order
    and its orders denying SSI’s motions for a new trial and
    judgment as a matter of law (“JMOL”) on invalidity, noninfringement,
    and damages. SSI also challenges the district
    court’s permanent injunction.

    Because the district court improperly restricted SSI’s
    efforts to present the jury with relevant evidence of invalidity,
    we vacate the court’s final judgment as to validity
    and reverse its denial of SSI’s motion for partial new trial
    on validity. In the interest of judicial economy, we also
    reach the remaining issues on appeal. We affirm on those
    issues in the event the ’110 patent is found not invalid following
    the new trial.

    On obviousness


    The district court apparently interpreted SSI II to foreclose
    all obviousness theories based on Eriksen in view of
    Bridgestone. But taken in context, SSI II does not go so
    far. In SSI II, SSI raised only one obviousness theory.
    That theory was based on the contention that the air tube
    54 in the Bridgestone reference met the “additional hose”
    limitation in claim 26 of the ’110 patent. SSI II, 616
    F. App’x at 995. It was the only obviousness theory that
    SSI II foreclosed, and the district court should not have
    barred SSI from presenting to the jury other preserved obviousness
    theories based on the combination of Eriksen
    and Bridgestone that were not before this court in SSI II.
    To that end, we agree with SSI that a partial new trial on
    validity is appropriate here.
    While we decline to reverse the district court’s denial
    of JMOL of invalidity, we reverse the district court’s denial
    of SSI’s motion for a partial new trial on validity. The district
    court is therefore directed to grant SSI a new trial limited
    to determining the issue of validity on an appropriate
    evidentiary record. In view of this decision, we do not reach
    SSI’s remaining arguments related to invalidity.1

    Of 112 P6:

    Paragraph 6 does not apply when “the words of the
    claim are understood by persons of ordinary skill in the art
    to have a sufficiently definite meaning as the name for
    structure.” See Diebold Nixdorf, Inc. v. ITC, 899 F.3d 1291,
    1297 (Fed. Cir. 2018). As a procedural matter, to determine
    whether § 112, ¶ 6 applies to a claim limitation, we
    first look to whether the limitation uses the word “means.”
    Id. at 1297–98. If not, which is the case here, “there is a
    rebuttable presumption that [§ 112, ¶ 6] does not apply.”
    Id. at 1298. The presumption, however, can be overcome
    “if the challenger demonstrates that the claim term fails to
    ‘recite sufficiently definite structure.’” Id. (quoting Williamson,
    792 F.3d at 1349). For example, in Williamson,
    we said that “[g]eneric terms such as ‘mechanism,’ ‘element,’
    ‘device,’ and other nonce words that reflect nothing
    more than verbal constructs may be used in a claim in a
    manner that is tantamount to using the word ‘means’ because
    they ‘typically do not connote sufficiently definite
    structure’ and therefore may invoke § 112, para. 6.” 792
    F.3d at 1350 (quoting Mass. Inst. of Tech. v. Abacus Software,
    462 F.3d 1344, 1354 (Fed. Cir. 2006)).
    To determine whether the claim limitation at issue
    connotes sufficiently definite structure to a person of ordinary
    skill in the art, we look first to intrinsic evidence, and
    then, if necessary, to the extrinsic evidence. See Phillips v.
    AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).

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  • ‘Bad Patents’ Are Just Another Big Tech False Narrative

    Over the last 15 years, Congress, the courts and the USPTO have gutted the patent system. Fortunately, USPTO Director Andrei Iancu has been taking important steps to reverse some of the damage, with revised 101 guidance and changes in the Patent Trial and Appeal Board (PTAB). But the most important thing Iancu is doing is silencing the big tech “patent troll” narrative. False political narratives condense complicated issues into an object and then villainize the object. Once a villain is…

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  • French Cour de Cassation Ruling on Defendant’s Profits

    I’ve blogged about this case, Carrera SARL et Texas de France SAS v. Muller et Cie, PIBD No. 1112, III, 120 (Jan. 23, 2019), once before (here), after the December 2016 Court of Appeals decision, which held that the plaintiff was not entitled to an award of the defendant’s profits.  In January of this year, however, the Cour de Cassation reversed, holding that even though the plaintiff did not practice the patent itself it was entitled, under French law, to have the court consider the defendant’s profits as an element of damages.
    Here is what I wrote about the Court of Appeals decision in 2017:
    Carrera SARL et Texas de France SAS v. Muller et Cie, PIBD No. 1067, III, 170 (Dec. 9, 2016), appears to take the latter view, namely that IP owners are entitled to recover damages for their own losses but not an award of the infringer’s profits as such.  If I’m reading the facts correctly, Muller (owner of European Patent 1,067,822 for a “Heating element manufacturing process for heating or cooking apparatus, such heating element and apparatus incorporating it“) is a patent holding company that had licensed the patent, royalty-free, to six affiliated companies.  Muller prevailed on liability, but sought to recover an award of the defendants’ profits rather than a reasonable royalty.  The district court awarded damages in the amounts of  €327,733 and €280,130, respectively, as well as damages for moral prejudice in the amount of €100,000.  Both parties appealed.  The Court of Appeals, however, rejected Muller’s argument that  it could opt for an award of profits, stating (my translation):

    Moreover, while it is true that the Law of October 29, 2007, implementing Directive 2004/48, invites the judge to take into account “the benefits realized by the infringer,” it does not  authorize the confiscation of those benefits; and this taking into account is limited only to the portion relating to the losses suffered as a result of the exploitation, in order to attain a complete reparation for the loss.” 

    Furthermore, if I’m reading this correctly, since Muller disavowed any reliance on a reasonable royalties theory, the court also threw out that award; and it also disallowed the award for moral prejudice, concluding that there was no evidence that the infringement caused any harm to Muller’s reputation.

    Anyway, the Cour de Cassation annuls the Court of Appeals decision on defendant’s profits, stating that L. 615-7 of the I.P. Code confers upon the injured party a choice among damages remedies, and that “the existence, for the patent holder, of an economic prejudice resulting from patent infringement is not contingent upon the patent holder itself engaging in the exploitation of the patent” (my translation).  It’s not entirely clear to me, however, from the text of the decision and the accompanying commentary by S. Lepoutre and C. Martin, whether this means that the patent holder is entitled to recover all of the profits realized by the infringer as a result of the infringement, or only  if the court should take those profits into consideration in crafting an appropriate compensatory damages award (which, perhaps, could be for less than the entire profits realized as a result of the infringement).
    The Cour de Cassation affirmed the finding that there was no evidence that the patentee had suffered any moral prejudice as a result of the infringement.

    Many thanks to Pierre Véron for helpful discussion of this case.

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    $$ The ability to provide cooling to all surfaces ensures that the maximum levels of mechanical energy can be applied during the milling proc…

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  • A Lack of Focus on Trade Secrets Can Pose Serious Risks

    We all talk about the importance of data as business assets, but when it comes to buying and selling the companies that own them, we seem not to pay much attention. My anecdotal survey reveals that colleagues who focus on mergers and acquisitions  confess to a lack of focus on trade secrets. This may seem odd, even crazy, given the increasing percentage of industrial property represented by intangible assets—up from 17% in 1975 to 84% in 2015. The problem appears to start with the fact that…

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  • CAFC explicates Mayo, Vanda in Endo v. Teva

    The outcome was reversal:


    Endo Pharmaceuticals Inc. appeals the district court’s
    decision holding the claims of U.S. Patent No. 8,808,737
    ineligible under 35 U.S.C. § 101. See Endo Pharms. Inc. v.
    Actavis Inc., No. 14-cv-1381-RGA, 2015 WL 7253674
    (D. Del. Nov. 17, 2015) (“District Court Op.”), adopting report and
    recommendation, 2015 WL 5580488 (D. Del.
    Sept. 23, 2015) (“Magistrate Op.”). Because the district
    court incorrectly concluded that the claims at issue are directed to a natural law, we reverse

    As to 12(b)(6)


    “We apply regional circuit law to the review of motions
    to dismiss for failure to state a claim under Rule 12(b)(6),”
    In re TLI Commc’ns Patent Litig., 823 F.3d 607, 610
    (Fed. Cir. 2016), here, the Third Circuit. The Third Circuit
    “review[s] de novo a district court’s grant of a motion to dismiss
    for failure to state a claim under Federal Rule of Civil
    Procedure 12(b)(6).” Ballentine v. United States, 486 F.3d
    806, 808 (3d Cir. 2007). To survive a motion to dismiss for
    failure to state a claim, a complaint must allege “enough
    facts to state a claim to relief that is plausible on its face.”
    Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “We
    review issues unique to patent law, including patent eligibility under § 101,
    consistent with our circuit’s precedent.”
    Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
    873 F.3d 1364, 1367 (Fed. Cir. 2017)

    As to 101:


    Applying this law, we conclude that the asserted claims
    are not directed to patent-ineligible subject matter.3 On
    the contrary, the claims are directed to a patent-eligible
    method of using oxymorphone or a pharmaceutically acceptable salt
    thereof to treat pain in a renally impaired patient.4 Our conclusion is supported by the claim language
    itself and confirmed by the specification. The claims recite
    “[a] method of treating pain in a renally impaired patient.”
    ’737 patent col. 48 ll. 7–9. Claim 1 also requires specific
    steps: (a) providing a pharmaceutical (5–80 mg of oral controlled-release
    oxymorphone or one of its pharmaceutically
    acceptable salts), (b) testing the patient for a disease state
    (reduced kidney function based on creatinine clearance
    rate), and then (c) administering the pharmaceutical (a
    lower dose of oxymorphone) based on the creatinine clearance rate to achieve
    an average AUC of oxymorphone over
    a 12-hour period of less than 21 ng·hr/mL. Consistent with
    the claims, the abstract, patent title, and summary of the
    invention all describe the invention as a “method of treating pain” in patients
    with renal impairment. Id. at Abstract, col. 1 ll. 1–5; see id. at col. 2 ll. 35–43. The
    specification predominantly describes the invention as a
    method that treats renally impaired pain patients with less
    oxymorphone while still treating their pain. Indeed, the
    specification explains that the method “avoid[s] possible issues in dosing” and allows for treatment with “the lowest
    available dose” for patients with renal impairment. Id.
    at col. 10 ll. 26–27, 40–41.

    We held similar claims patent-eligible in Vanda Pharmaceuticals Inc. v.
    West-Ward Pharmaceuticals International Ltd, 887 F.3d 1117 (Fed. Cir. 2018).
    The patent at
    issue in Vanda related to a method of treating schizophrenia patients with a drug (iloperidone),
    where the administered dose is adjusted based on whether or not the patient
    is a “CYP2D6 poor metabolizer.” 887 F.3d at 1121.

    (,,,)

    The claims at issue here are legally indistinguishable
    from the representative claim in Vanda. Both claims recite
    a method for treating a patient. The Vanda patent claims
    recite the steps of carrying out a dosage regimen based on
    the results of genetic testing. Id. at 1135. Here, the claims
    similarly recite the steps of carrying out a dosage regimen,
    though the steps are based on the results of kidney function
    testing. Additionally, the claims in both cases require specific treatment steps.

    (…)

    Also like the claims in Vanda, the claims here differ
    from those in Mayo in material respects. Although the representative claim in Mayo recited administering a thiopurine drug to a patient, the claim as a whole was not directed
    to the application of a drug to treat a particular disease.
    See Mayo, 566 U.S. at 74, 87; Vanda, 887 F.3d at 1134.
    Furthermore, the administering step in Mayo is distinguishable from the administering step in the ’737 patent
    because the administering step in Mayo is the first step in
    the method that simply describes giving the drug to a patient with a certain disorder. By contrast, the administering step in the ’737 patent is the step that describes giving
    a specific dose of the drug based on the results of kidney
    function testing. The Supreme Court in Mayo underscored
    the distinction between such method of treatment claims
    and those in Mayo, noting that “[u]nlike, say, a typical patent on a new drug or a new way of using an existing drug,
    the patent claims do not confine their reach to particular
    applications of those laws.” Mayo, 566 U.S. at 87; Vanda,
    887 F.3d at 1135. In Vanda, the inventors recognized the
    relationship between iloperidone dosage and the patient’s
    CYP2D6 poor metabolizer genotype, but that was not what
    they claimed.

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