Inherent Disclosure Supports Priority Claim

In Yeda Research and Development Co. v. Abbott GmbH and Co., the Federal Circuit invoked the doctrine of inherent disclosure to uphold a priority claim to a German priority application that only partly described the claimed protein. Although the patent owner prevailed in this case, the fact pattern underscores the importance of including a robust disclosure in priority applications. It also highlights the tension between securing an early filing date and waiting until the claimed subject matter has been fully characterized–a dilemma faced by many applicants in biotechnology fields.  Continue reading this entry

CAFC Says Functional Claim Language Does Not Create Divided Infringement

In LifeNet Health v. LifeCell Corporation, one of the many issues the Federal Circuit decided was that functional claim language did not create a divided infringement situation, even though an independent actor could impact whether the functional limitation was met. Under the court’s decision, since the limitation was a negative one, an independent actor could negate infringement, but his or her action is not required to establish infringement. Continue reading this entry

Apotex Biosimilar Cleared Of Infringement But Pre-Marketing Notice Still Required

In what may be the first decision on the merits in a patent infringement suit brought under the Biologics Price Competition and Innovation Act (BPCIA), the U.S. District Court for Southern District of Florida has found that the method of making the Apotex biosimilar versions of Amgen’s Neupogen® (filgrastim) and Neulasta® (pegfilgrastim) products does not infringe the asserted Amgen patent. Nevertheless, the court enjoined Apotex from entering the market until 180 days after it gives Amgen notice of commercial marketing once its biosimilar products are approved.  Continue reading this entry

Magistrate Judge Nixes TB Test Kit Claims

In a “Report and Recommendation on Defendants’ Joint Motion To Dismiss,” U.S. Magistrate Judge Cabell of the U.S. District Court for the District of Massachusetts determined that TB test kit claims do not satisfy the patent eligibility requirement of 35 USC § 101, but declined to reach the same conclusion with regard to related method claims. The decision was issued in Oxford Immunotec Ltd. v. Qiagen, Inc., where Oxford has asserted that Qiagen’s test kits for diagnosing TB infection in vitro infringe a number of its patents.

Continue reading this entry