Patent Law Weblog
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- Apple v. Squires: USPTO Director Has Unlimited Discretion on IPR Institution
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Category: Obviousness
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By Nicole Reifman — Last week, in Smith & Nephew, Inc. v. Rea, the Federal Circuit reversed a decision of the Patent Trial and Appeal Board, finding U.S. Patent No. 7,128,744 (the '744 patent), which is owned by Synthes, to be obvious. Smith & Nephew originally submitted a request for reexamination of the '744 patent,…
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By Andrew Williams — When is a combination of two separate treatments for a particular disease obvious-to-try, such that it is rendered obvious for the purposes of patentability? The Supreme Court answered this question in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), when it said that "obvious to try might show that…
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By Andrew Williams — Can a method of treatment claim be inherent in the prior art if neither the formulation nor the method of using the formulation twice a day were in the prior art? Earlier today, the Federal Circuit determined in Allergen v. Sandoz that a claimed method for treating glaucoma (which differed from the…
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By Michael Greenfield — Contraceptives were the subject of the Federal Circuit's recent decision in Bayer Healthcare Pharmaceuticals, Inc. v. Watson Pharmaceuticals, Inc. But, unfortunately, it's a rather fact-specific case with nothing of prurient or even much general legal interest to spice up the lonely patent practioner's day. The battle was over Bayer's RE37,564 patent…
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By Michael Greenfield — Those of you who dabble with chemical structures while prosecuting or litigating pharmaceutical patents may find Allergan v. Barr Laboratories, Inc., interesting. In this ANDA litigation brought by Allergan against Barr, Teva, and Sandoz ("Barr"), the Federal Circuit opined on issues of claim construction and obviousness with respect to Allergan's Lumigan®,…
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By Andrew Williams — Last week, in Pozen Inc. v. Par Pharmaceutical, Inc., the Federal Circuit affirmed the decision of the U.S. District Court for the Eastern District of Texas that two patents that describe treating migraines by combining two known drugs in a single dose had not been shown to be obvious or inadequately…
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By Kevin E. Noonan — It is an occupational hazard for patent attorneys to be tempted to over-interpret Supreme Court and Federal Circuit opinions relating to certain areas of patent law or their applications to certain technologies. This is particularly true with regard to the question of obviousness for biotechnology inventions, in the aftermath of…
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By Andrew Williams — Last week, the Federal Circuit partially overturned the U.S. District Court for the District of Delaware's decision in Santarus, Inc. v. Par Pharmaceutical, Inc., thereby allowing Santarus to keep Par's generic version of Zegerid® off the market until the expiration of the Orange Book-listed patents. Judge Newman provided a separate opinion,…
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By Kevin E. Noonan — In a case otherwise of little interest to the biotech/pharma community, the Federal Circuit last month increased the burden on proving patentability created by prior art references for patent applicants and patentees. This was accomplished by defining a presumption of enablement not only for prior patents and published patent applications…
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"This is not how patent law works." By Andrew Williams — Writing for the majority in Alcon Research, Ltd. v. Apotex Inc. last Wednesday, Judge Moore took issue with a position advanced by Alcon's counsel that would have essentially allowed a court to rewrite patent claims to preserve validity. Because of that, in part, the…
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