A Not-So-Obvious Threat to Pharmaceutical Patent Portfolios

I.  INTRODUCTION A bill working its way through Congress seeks to curb so-called abusive patent litigation tactics. But a less sensational provision warrants close attention, particularly from the pharmaceutical industry. The provision, if passed, could threaten issued patents in ways parties don’t expect. The recent “Innovation Act”1 that the House passed in December2 and its Senate companion bill3 both seek to codify the judicial doctrine of obviousness-type double patenting (ODP). At first glance the change Continue Reading →

En Banc Federal Circuit Opts for Status Quo as it Upholds Cybor No-Deference Rule

Claim construction is arguably the most crucial aspect of a patent infringement case. As some prominent legal scholars and practitioners note, “[claim construction] is central to evaluation of infringement and validity, and can affect or determine the outcome of other significant issues such as unenforceability, enablement, and remedies.” To date, there have been three important claim construction cases. In Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), the Supreme Court, while not categorizing claim construction as Continue Reading →

New Patent Law Cheered by Large Corporations May Prove Beneficial to Small Entities As Well

On December 5, 2013, the House of Representatives passed H.R. 3309, the “Innovation Act” sponsored by Representative Bob Goodlatte of Virginia. The law has moved quickly through committee and made it to the floor of the house in just over a month. The bill has been interpreted as an attack on Non-Practicing Entities (NPEs), more commonly known as patent trolls, and numerous commentators have addressed the potential implications of the bill’s modification of infringement suits Continue Reading →

STLR Link Roundup – November 7, 2013

High-Tech, “Green” Cars Could Be the Next IP Battleground In the last five years, the number of patents filed per quarter increased from 20 to 90 by automobile manufacturers. These patents all relate to hybrid or electrical vehicle technologies. Automobile manufacturers are worried that the litigation war affecting the smartphone industry will spread to electric and hybrid vehicles. The automobile industry has been steadily expanding, and questions by potential consumers about battery reliability, driving range, Continue Reading →

What’s At Stake in Monsanto’s Latest Legal Headache

Last month, the Public Patent Foundation (PPF) asked the Supreme Court to hear its case challenging the validity of Monsanto’s seed patents.  If this narrative sounds familiar, that’s because it is; the case again pits the PPF and farmers against the biotech giant much like the Supreme Court case last term, Bowman v. Monsanto. While Bowman addressed critical issues of patent law raised by the self-replicating nature of transgenic seeds, the current petition in Organic Continue Reading →

Myriad: The Right Decision for the Wrong Reasons

Over half of women who carry mutations on their BRCA1 or BRCA2 gene will develop breast cancer before they are 70. Angelina Jolie recently had a double mastectomy after discovering she has a mutation in her BRCA1 gene. By doing so, she decreased her chance of developing breast cancer substantially. Now, especially for women who have a history of breast cancer in their families, knowing whether you have the gene that predisposes you to the Continue Reading →

A Patent that Self-Replicates

Does Patent Exhaustion apply to the sale of self-replicating seeds? On February 19, the Supreme Court heard the oral argument in Bowman v. Monsanto on the application of patent exhaustion to patented self-replicating seeds.  Under the doctrine of patent exhaustion, “the initial authorized sale of a patented item terminates all of the patent owner’s rights in that item.”  Monsanto holds a patent on a gene which makes plants resistant to glyphosate herbicides.  Farmers use the Continue Reading →

Alternative Statutory Bases for Invalidating “Gene Patents”

The Supreme Court recently granted a writ of certiorari in the highly controversial case Association for Molecular Pathology v. Myriad. In the coming months, the Court will determine whether the genetic material claimed by Myriad’s composition patents is patentable subject matter under Section 101 of the Patent Act. The high profile case has generated a widespread debate often framed as whether genes should be patentable. To the extent that the patentability of genetic material is Continue Reading →

Smartphone Wars: Part II

On August 24th, Apple won decisively in Apple v. Samsung. The jury awarded Apple $1.04 billion for infringing Apple’s intellectual property. This was less than the $2.5 billion that Apple requested, but the jury found that Apple wasn’t infringing any of Samsung’s patents. Of the many patents that were disputed, the judgment turned on three patents and Apple’s trade dress argument. The pertinent features were the following: (i) bounce-back effect; (ii) pinch-to-zoom feature; and (iii) Continue Reading →

“More Than a Drafting Effort”: SCOTUS Strikes Down Prometheus Labs Patents

On March 20, the Supreme Court handed down their unanimous decision in the case of Mayo Collaborative Services v. Prometheus Laboratories, Inc. The Court struck down Prometheus’s patents stating that, regardless of the language in the claims, they were effectively patents on a law of nature which is not allowed. The Court added that any process which recites a law of nature must have other features and limitations that “provide practical assurance that the process Continue Reading →