Humira Patent Invalid For Obviousness Type Double Patenting

In AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, the Federal Circuit affirmed the district court’s finding that a second patent covering  AbbVie’s Humira product is invalid under the doctrine of obviousness-type double patenting. The decision reaffirms the court’s stance in Gilead that the doctrine remains valid under the 20-year patent term system, and serves an important public policy goal of ensuring that once a patent protecting an invention has expired, the public is free to practice that invention and its obvious variants. The court may have gone too far, however, in relying on the disclosure of the reference patent to support its obviousness determination. Continue reading this entry

Airing The USPTO’s Naturally Occurring Dirty Laundry — The Subject Matter Eligibility Stain

It has been five months since the USPTO issued its Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products to aid examiners in applying the principles of Myriad and Prometheus to any claim “reciting or involving laws of nature/natural principles, natural phenomena, and/or natural products.” While many of the rejections based on this Guidance are expected, some rejections leave even the most jaded practitioners scratching their heads. Do these rejections reflect the official USPTO position, or are individual examiners misapplying the Guidance?

Unfortunately, it will take many months and many more dollars to find out, and many would-be patent holders may be discouraged from pursuing important technologies due to this unprecedented uncertainty surrounding what types of inventions can be patented in the United States. Continue reading this entry

Federal Circuit Upholds Inequitable Conduct Defense Against Apotex Patent

In Apotex Inc. v. UCB, Inc., the Federal Circuit upheld the district court’s finding that Apotex’s patent is unenforceable due to inequitable conduct. While affirming on the ground of “but-for materiality,” the Federal Circuit noted that the inventor’s conduct “at a minimum, come[s] close to the type of affirmative misconduct” that can “justify finding inequitable conduct without showing but-for materiality.” This case also serves as a reminder that the USPTO still has not acted on its proposal to align Rule 56 with TherasenseContinue reading this entry

First Post Grant Review Petition Shows That Amending Claims Is Not Child's Play

The first Post Grant Review petition visible to the public was filed August 5, 2014, against U.S. Patent 8,684,420. The patent was granted from an application filed July 26, 2013, but claims priority through a series of continuation applications to an application filed September 8, 2011, and to a provisional application filed November 5, 2010. The Petitioners, LaRose Industries, LLC and Toys “R” Us-Delaware, Inc., allege that the patent is subject to post grant review because the granted claims allegedly are not supported by the original disclosure, and so have an effective filing date later than the March 16, 2013 critical date for post grant review. Continue reading this entry

Federal Circuit Finds That FDA Citizen Petition Could Give Rise To Antitrust Liability

In Tyco Healthcare Group LP v. Mutual Pharmaceutical Co., Inc., the Federal Circuit remanded-in-part for the district court to determine whether Tyco’s citizen petition to the FDA gave rise to antitrust liability. Judge Newman wrote a dissenting opinion warning against the chilling effect that antitrust liability could have on a citizen’s right to communicate with the FDA on matters relating to drug safety and efficacy. Continue reading this entry