Update On Myriad Appeal And Announcing A Public Forum On The USPTO 101 Guidelines

Myriad has appealed the district court decision that denied its motion for a preliminary injunction against Ambry Genetics Corp. According to a report in Bloomberg BNA Life Sciences Law & Industry Report™, on April 14 , 2014, the Federal Circuit denied Myriad’s motion to expedite proceedings, but it is still possible that this Myriad appeal will be argued and decided by the end of this calendar year. Continue reading this entry

Federal Circuit Find Fractures in Roche Boniva Patents

In Hoffman-LaRoche, Inc. v. Apotex, Inc., the Federal Circuit affirmed the district court’s summary judgment that two Roche Boniva patents are invalid as obvious. The conclusion of obviousness is not particularly remarkable based on the Federal Circuit s recounting of the prior art, but the court’s willingness to affirm invalidity on summary judgment where the record included evidence of unexpected results demonstrates the difficulty of prevailing against obviousness challenges. Continue reading this entry

The Complexities Of The USPTO Proposed Attributable Ownership Rules

The USPTO proposed attributable ownership rules would require the public disclosure of the “attributable owner” of patent applications and patents. As discussed in this article, the proposed definition of  “attributable owner” reaches far beyond title holder (assignee), and includes parties with standing to enforce the patent (including exclusive licensees), ultimate parent entities as defined in 16 CFR § 801.1(a)(3), and hidden beneficial owners. This article provides an overview of some of the complexities of the proposed rules and their potential conflict with other areas of law and public policy.  Continue reading this entry

Do The USPTO 101 Guidelines Violate International Trade Agreements?

One advantage of being a blogger in the relatively small world of patents is that I have gotten to know practitioners in other countries who also have a keen interest in patent law. One such person is Australian Registered Patent Attorney Mark Summerfield, who blogs at Patentology. I enjoyed his article on the new USPTO 101 Guidelines, and that led to a discussion where he raised the question whether the Guidelines violate international trade agreements. He agreed that I could share his comments here, and I do so to spark further consideration, discussion, and public comments challenging the Guidelines. Continue reading this entry

Federal Circuit Refuses To Find Implied License For Endo Opana Patents

In Endo Pharmaceuticals, Inc. v. Actavis, Inc., the Federal Circuit reversed the district court’s decision denying Endo’s motion for summary judgment of infringement based on an implied license. The Federal Circuit found that Roxane and Actavis did not have an express or implied license to practice the Endo Opana patents at issue, even though they were related to licensed patents.

The Previous ANDA Litigation and License Agreements

The patents at issue relate to Endo’s Opana® ER product, which is an extended release formulation of oxymorphone. The parties were involved in earlier ANDA litigation over different Orange Book listed patents for Opana® ER, which was settled by a license and covenant not to sue. Continue reading this entry