Federal Circuit Judges Disagree On Use Of Post Filing Date Evidence Of Nonobviousness

On October 20, 2014, the Federal Circuit issued an order denying the petition for rehearing or rehearing en banc filed in Bristol-Meyers Squibb Co. v. Teva Pharmaceuticals, USA, Inc. While the order itself may not be surprising, with two opinions concurring in the denial and two dissenting, it is clear that there is more to the story. Indeed, the judges seem to disagree as to the permitted use of post-filing date evidence in a nonobviousness analysis.  Continue reading this entry

Finally Facing First Inventor To File Issues

It has been over three years since the Leahy-Smith America Invents Act was signed into law by President Obama, and just over eighteen months since the effective date of the first-inventor-to-file changes to 35 USC § 102. While those changes were a hot topic in March of 2013, it is only over the past few weeks that I have been facing first-inventor-to-file issues in my daily practice. These are a few of the questions I have been encountering. Continue reading this entry

Federal Circuit Jurisdiction Over Patent Contract Disputes

In a precedential order issued in Jang v. Boston Scientific Corp., the Federal Circuit held that it has jurisdiction over the parties’ patent-related contract dispute under Gunn v. Minton even though the patents at issue have been invalidated. Despite having found Federal Circuit jurisdiction, the court denied the parties’ petition for permission to bring an interlocutory appeal because too many potentially relevant facts were unresolved. Continue reading this entry

Federal Circuit Hears Arguments In Other Myriad Gene Patents Case

On October 6, 2014, the Federal Circuit heard oral arguments in a case involving the claims of the Myriad gene patents that were not invalidated by the Supreme Court’s 2013 decision. The Federal Circuit is reviewing the district court’s denial of Myriad’s motion for a preliminary injunction against Ambry Genetics Corp., based on the finding that Ambry had “raised a substantial question” as to whether Myriad’s “Primer Claims” and “Method Claims” are directed to “patent [in]eligible products of nature and abstract ideas.” (You can read more about the district court decision here.) The easiest decision for the Federal Circuit to reach would be to affirm based on the “substantial question” standard without deciding patent eligibility on the merits. As Myriad’s counsel suggested, such a decision would leave the biotech industry “at sea” until the case makes it way back to the Federal Circuit again.

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Federal Circuit Upholds Inequitable Conduct Post Therasense For Withheld Information

In American Calcar, Inc. v. American Honda Motor Co., the Federal Circuit upheld the district court’s finding that three Calcar patents are unenforceable due to inequitable conduct. Both courts reached this decision of inequitable conduct post Therasense despite the fact that the validity of the patents over the information at issue had been upheld, and despite the lack of direct evidence of an intent to deceive. Judge Newman’s dissent raises additional questions regarding the basis of the decision. Continue reading this entry