• Life Sciences Court Report
    in: Court Report  | 

    Life Sciences Court Report

    By Bryan Helwig — About Court Report: Each week we will report briefly on recently filed biotech and pharma cases, and a few interesting cases will be selected for periodic monitoring. Celgene Corp. v. Synthon Pharmaceuticals, Inc. 2:18-cv-10775; filed June 19, 2018 in the District of New Jersey (Newark) • Plaintiffs: Celgene Corp. • Defendants: Alvogen Pine Brook, LLC; Synthon BV; Synthon Pharmaceuticals, Inc.; and Synthon S.R.O Claim: Infringement of U.S. Patent Nos.: • 8,198,262: ″Methods for treating multiple myeloma using 4-(amino)-2-(2,6-dioxo(3-piperidyl))-isoindoline-1,3-dione″ • 8,673,939: ″Methods for treating multiple myeloma with 4-(amino)-2-(2,6-dioxo(3-piperidyl))-isoindoline-1,3-dione″ • 8,735,428: ″Methods for treating multiple myeloma with 4-(amino)-2-(2,6-dioxo(3-piperidyl))-isoindoline-1,3-dione″…

  • Conference & CLE Calendar
    in: Conferences & CLE's  | 

    Conference & CLE Calendar

    July 17, 2018 – “Drafting and Defending Software Patents to Survive Section 101 and AIA Challenges — Anticipating and Minimizing the Risk of 101, 103 Rejections, Recent Court Guidance” (Strafford) – 1:00 to 2:30 pm (EDT) July 17, 2018 – Technology Cen…

  • 後述
    in:  | 




    $$ The ion mobility spectrometer or separator 3 may take a number of different forms which will be discussed in more detail below. / イオ…

  • Pfizer loses at CAFC on length of a patent term adjustment (“PTA”) for U.S. Patent No. 8,153,768

    The CAFC affirmed ED Va and noted general issues with 35 U.S.C. § 154(b)(1).

    Judge Newman dissented:

    I respectfully dissent.
    The panel majority’s ruling on patent term
    adjustment is in conflict with the
    Patent Act, for the PTO’s
    admittedly incomplete restriction require-
    ment during patent examination
    contributed to the delay
    in issuance of the patent.

    link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1265.Opinion.1-20-2016.1.PDF

    Continue Reading ...
  • Federal Circuit Finds Case Exceptional but Vacates Attorney Fees Calculation

    Authored by Paul T. Qualey and Andrew D. Kasnevich Digest of LUMEN VIEW TECHNOLOGY LLC, V. FINDTHEBEST.COM, INC., Nos. 2015-1275, 2015-1325 (Fed. Cir. Jan. 22, 2016). On appeal from S.D.N.Y. Before Lourie, Moore, and Wallach. Procedural Posture: Plaintiff appealed from the … Continue reading

    The post Federal Circuit Finds Case Exceptional but Vacates Attorney Fees Calculation appeared first on CAFCBlog.com.

    Continue Reading ...
  • Federal Circuit: Board Must Explain its Decisions

    by Dennis Crouch In the non-precedential Cutsforth v. MotivePower decision, the Federal Circuit has vacated a PTAB inter partes review (IPR) final decision — holding that “the Board did not adequately describe its reasoning for finding the claims obvious.” The patent at issue is directed to a brush-assembly used to maintain an electric current with a […]

    Continue Reading ...
  • CAFC: Obvious even if it meant foregoing benefits of prior art

    The Court affirmed the obviousness rejection. “As the Board properly found, one of ordinary skill would have been motivated to pursue the desirable properties taught by Wong [a shorter reaction time like Urbanski’s], even if that meant foregoing the benefit [of more stable fibers from a longer reaction time] taught by Gross.” One of ordinary skill could have been motivated to modify Gross in view of Wong to achieve the desired effects.

    The post CAFC: Obvious even if it meant foregoing…

    Continue Reading ...
  • Is the cost of atmospheric music, stratospheric? Part 1

    Ever found yourself tapping your foot at the till of your favourite clothing store or doing something more violent in that funky denim studio? Can you blame your compulsion to purchase that new bag solely on a mild personality disorder or should the background beat-of-the-street shoulder some of the blame? Facts are that atmospheric music is played by retailers and not just to soften the ring of the register but also because it is enjoyable and encourages sales. But how much do they pay and is it proportionate?
    Late last year the Supreme Court of Appeal (the SCA – RSA’s highest commercial court) grappled with a rare case involving music royalties. The case, originally brought by a group of prominent retailers against the South African Performance Rights Association (SAMPRA) for charging excess rates for the licensing of background music that they played in their stores, is interesting because it is one of the very few cases on the determination of a reasonable royalty in South Africa. In this case, the court determined royalties based on international norms but not before dealing with a number of arguments related to the construction of the legislation, onus, competition law and property rights. The full case can be found here.

    The retailer’s obligation to pay a royalty is contained in s 9(A)(1)(a) of the Copyright Act 98 of 1978 (the Act). This section provides that in the absence of an agreement to the contrary no person may broadcast a sound recording without payment of a royalty to SAMPRA which is an accredited collecting society. This royalty is payable according to a tariff which is determined by agreement between the user and the performer and in the absence of an agreement, the determination may be referred to the Copyright Tribunal set up under the Act.
    As one might expect there was a failure to reach an agreement and the matter was referred to the tribunal which then issued a ruling. No unsurprisingly too, after much debate this ruling found that a reasonable tariff lay somewhere between what the retailers and SAMPRA each thought was reasonable, with a cost order in favour of the retailers. SAMPRA appealed and there was no cross appeal from the retailers. Apparently cross though, the retailers opposed the appeal.
    Basis of appeal

    This can be summarised as follows:
    1. There was a failure of the tribunal to consider principles of competition law in determining the royalty;
    2. The tribunal’s authority to make a ruling only triggered once the retailers had established that the tariff was unreasonable which they had not done. This was effectively an argument based on onus and jurisdiction of the tribunal which SAMPRA thought had been misconstrued; and
    3. That the retailers were obliged to disclose the Rand value derived from the use of  the sound recordings, which they had not done, in determining the reasonableness of the tariff


    On the question as to whether completion law principles were applied, the court gave short shrift to the argument and held that these were entirely new submissions and that it would be unfair to allow this now. Afro Leo suggests that procedurally this was the right approach and that although the competition arguments would have been very interesting to understand it appears somewhat desperate of SAMPRA. In any event, this Leo wonders whether, when determining reasonableness, competition elements are naturally considered without formal recourse to of this silo of law/economics?
    The construction of the Act was much debated and considered by the SCA. The Act is ambiguous in its construction and described (with reference to Dean’s Handbook of South African Copyright Law) as a “rather tortuous statutory scheme in terms in terms of which the tribunal derives its power”. Afro Leo agrees. For those interested in the doing some mind gym have a look at paras 12-30 of the judgment. Essentially, the court held that all that is required of retailers or claimant is to place evidence before the tribunal that the claim is well founded (there is no formal onus of proof) and “At the end of the day for the claimant to succeed the tribunal is required to be satisfied, on all the evidence placed before it [presumably including that of the respondent], that the claim is well founded.” This seems sensible.
    Necessity of showing rand value

    The question of whether the retailers should have lead evidence of the rand value they derived from use of the sound recording was considered; the argument essentially being that under the construction of S33(5)(b) of the Act, only once it had been established that this value was disproportionately lower than the proposed tariff could it be unreasonable, and that it would need to cause economic harm to the retailer. In addition, the recordings needed to sustain their business and no available alternative would serve the retailers economic interests (see paras 31- 37) . And you thought Everest was a challenge!
    After hearing various experts on whether this information was available, how such a study would be conducted, what its probative value would be and sensitivities over confidentiality [the arguments are interesting], the court held that such evidence would be “prohibitively expensive and impractical as it would take too long to complete. In addition, it cannot be said that any conclusion reached could apply to all retailers” and therefore “not necessary”.

    Afro Leo thinks that this is the correct ruling and wonders whether the court would take such a pragmatic approach to the evidence required to prove economic harm in trade mark dilution cases. Another reason why it seems correct is that in the Copyright Act, there exists a concept of a reasonable royalty in lieu of showing damages; implicitly recognising the difficulty of showing actual damage.

    Market forces

    Reasonableness and other methods for determining the tariff

    The two proffered by resident Profs were the “market-based solution” and by benchmarking with tariffs used in other jurisdictions.
    The market based approach essentially meant that, in the absence of an agreement, the market should be left to naturally determine the tariff. This approach was given short thrift by the court (just a single paragraph) after the Prof conceded that he was not aware of the legal framework which directed the tribunal to determine the tariff.  The court was perhaps too hasty here in its reasoning for it is still possible for the tribunal to determine the tariff, and then use a market based approach in its determination.

    The remainder of the judgment focuses on benchmarking and this will be dealt with in a separate post. Ever wondered what the relationship is between Big Macs and music royalties? You will get the Whopper lowdown in Part 2.

    Continue Reading ...
  • Inter Partes Review: An Unconstitutional Delegation of Judical Power

    Carl Cooper has now filed his constitutional challenge to the Inter Partes Review (IPR) system — arguing that the system is an unconstitutional delegation of judicial power to an administrative agency. [Petition: Cooper v. Lee] Question presented: Whether 35 U.S.C. §318(b) violates Article III of the United States Constitution, to the extent that it empowers an executive agency tribunal to assert […]

    Continue Reading ...
  • High Court Accepts First AIA Case

    Authors: Derek McCorquindale and James Stein Editor: Erika Harmon Arner On January 15, 2016, the Supreme Court of the United States granted certiorari in Cuozzo Speed Technologies, LLC v. Lee, No. 15-446. The Court will address whether the Patent Trial and Appeal Board may construe issued claims according to their broadest reasonable interpretation rather than the plain and […]

    Continue Reading ...
  • Redline Detection, LLC v. Star Envirotech, Inc. (Fed. Cir. 2015)

    The PTAB at the Federal Circuit — Supplemental Evidence Edition By Andrew Williams — On New Year’s Eve, the Federal Circuit affirmed the PTAB’s denial of a motion to submit supplemental evidence pursuant to 37 C.F.R. § 42.123(a), notwithstanding the fact that the motion was timely filed and relevant. In Redline Detection, LLC v. Star Envirotech, Inc., the Court explained that the Patent Office could interpret its own regulations related to PTAB trials, and that 37 C.F.R. § 42.5 provided the Board discretion in granting related motions. Finally, the Court affirmed the Board’s findings that the claims at issue were…

    Continue Reading ...