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Markman Advisors Patent Blog

Federal Circuit clarifies patent-eligibility for diagnostic method patents: Endo v. Teva and Natural Alternatives v. Creative Compounds.

The Federal Circuit has recently issued two precedential decisions that clarify when method-of-use and diagnostic patents are directed to eligible subject matter rather than natural laws.  Some clear guidelines are solidifying that should make enforcement of these principally pharmaceutical-type patents easier to handicap.

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Are polymorph patents necessarily obvious? A recent CAFC decision may read-through to Revlimid’s polymorph patents.

The Federal Circuit has issued a precedential decision addressing whether a patent covering a given polymorph was invalid as obvious, Grunenthal GmbH v. Alkem Laboratories Ltd.  Though the Court explained that it was not establishing a categorical rule that polymorph patents can never be obvious, the case nonetheless provides important guidelines for when a polymorph patents are likely to be invalid.  For those following Revlimid®’s patent cases, the immediate question is—does the Grunenthal case have read-through to Celgene’s polymorph patents? 

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The lesson from Theranos is that investors do not know how to read a patent.

Theranos’ patents may have assured investors that the company was a good bet, but that does not mean those patents were a failure of the patent system.  Rather, the patents illustrate a deficiency of IP literacy.  Investors—and recent commentators still—have taken the patents to mean something they are not.  Indeed, the patents—and the file histories behind them—have been public for years. Those patents and file histories revealed many red flags that were apparently ignored. 

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Is Novartis’ S1P modulator titration patent a “roadblock” to Celgene’s ozanimod?

While Bristol Myers ($BMY) proposed acquisition of Celgene’s ($CELG) remains in question by activists questioning Revlimid®’s pending patent cliff, a new patent angle emerges.  A Credit Suisse analyst recently identified a patent owned by Novartis ($NVS) that could purportedly act as a “roadblock” to Celgene’s MS drug ozanimod.  Is this true?

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Does the Lotus IPR matter to Celgene’s Revlimid or the Bristol transaction?

We previously blogged about Dr. Reddy’s IPRs filed against MDS patents covering Celgene’s Revlimid®.  Those IPRs attracted considerable attention because they were, for better or worse, one of the few data-points within the Revlimid® patent skirmishes we are guaranteed to see before the Bristol transaction closes.  The Lotus IPR attacking one of Celgene’s multiple myeloma patent is another datapoint.  The PTAB’s decision on whether to institute the IPR is due March 18.  How much does Lotus IPR really matter?

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Does UC’s new CRISPR-Cas9 patent really cover eukaryotes?

In the latest episode in the long-running CRISPR-Cas9 patent battle between the University of California and Broad, UC has obtained a new patent related CRISPR-Cas9.  UC has touted this patent, as well as another expected to issue shortly, as “useful to locate and edit genes in any setting, including within plant, animal, and human cells.”  So, did UC just win patents covering CRISPR-Cas9 in eukaryotes?  How does this square with the patent interference that UC recently lost at the Federal Circuit on this very issue?

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Is Corcept’s new Korlym lawsuit a game-changer against Teva?

Corcept Therapeutics ($CORT) recently filed a new lawsuit against Teva ($TEVA) related to Teva’s proposed generic for Korlym®.  The new suit asserts three new patents that were recently listed in the Orange Book.  Are the three new patents a game-changer?

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Does Uniqure or Spark Therapeutics own the key patents covering FIX-Padua for hemophilia B?

Uniqure ($QURE) and Spark Therapeutics ($ONCE) are squaring off over who will soon provide the best haemophilia B gene therapy.  Meanwhile, the companies have acknowledged that intellectual property issues may be critical to which drug will come out on top.  Will the patent issues cloud either drug’s commercial performance?

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Why does Qualcomm's Pre-Trial Motion Win Against Apple Matter?

This ruling will therefore frustrate Apple’s efforts to put Qualcomm’s general licensing practices on trial, leaving the jury to focus on the particulars of Qualcomm’s demands of Apple. For its part, Qualcomm and its investors will be pleased that the company will not have to fight a distracting rearguard action in defense of its licensing history before the jury. The decision may be a short one, but the impact on each side’s trial presentation is significant.

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Markman Advisors
What to make of Dr. Reddy’s IPR losses for Celgene’s Revlimid patent cases?

Last week, we wrote about milestones to watch for in Celgene’s ($CELG) Revlimid® patent landscape in 2019 that could potentially impact the Bristol Myers ($BMY) transaction.  One data-point that investors were anticipating were institution decisions in three petitions for inter partes review (IPRs) filed by Dr. Reddy’s.  This week, the PTAB denied institution of all three IPRs.  How will those decisions read-through to the overall Revlimid® patent landscape?

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AbbVie still can’t escape Boehringer’s claim that its Humira patent-thicket was wrongful.

The Court in AbbVie’s patent fight over Humira with Boehringer Ingelheim said that it “seems clear enough” that AbbVie had a patenting program designed to mitigate biosimilar entry for Humira®.  Though AbbVie clearly danced around ways to avoid producing much of its behind-the-scenes strategizing for building a patent estate sizeable enough to practically coerce settlements, the Court has ordered AbbVie to pull up its skirt.

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Three milestones to watch for in 2019 that could impact generic entry for Celgene’s Revlimid.

Since announcing the pending acquisition of Celgene ($CELG) by Bristol Myers ($BMY), investors have focused upon the patent-cases involving Revlimid®.  There are multiple cases and petitions for inter partes review (IPRs) at various stages of resolution.  The key question among investors is whether there will be any key milestones in those cases--especially during 2019 before the Bristol acquisition closes—that will clarify exactly when any of the pending generics will enter.  In this post, we identify three potential milestones to watch for from the Revlimid® patent landscape in 2019. 

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Why Apple Correctly Took Two Bites at a Qualcomm(?) Patent...

Ah, Qualcomm v. Apple. Always giving us something to talk about. In the latest news, the PTAB rendered its institution decisions on two Apple challenges to a patent Qualcomm had acquired from Palm, and asserted against Apple in Qualcomm’s first patent salvo back in late November of 2017. Since everyone knows that this Qualcomm-Apple battle is a cage match, it should be no surprise that Apple filed two IPRs against the same patent. Smart choice, considering that Apple won institution on one IPR, and lost the second.

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Markman Advisors
District of Delaware Makes it Harder to Corner the Market on Antibody Patents in MorphoSys v. Janssen

See our post in IPWatchdog. “The case is important to the growing body of patents covering biologic drugs because it delineates more precisely when functionally-claimed antibody patents can survive enablement and written description challenges.”

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MorphoSys loses its Darzalex patent case against J&J—what happens next?

Morphosys’ ($MOR) patent trial against Janssen ($JNJ) and Genmab was headed for trial in February.  In advance of that trial, however, the parties traded numerous summary judgment motions.  On January 26, Genmab announced that the District Court granted its motion to invalidate the asserted patents.  What happens next?

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For Amgen’s PCSK9 patent case, is there any read-through from Court’s summary judgment order to the trial?

On January 18, the District Court in Delaware issued an opinion resolving multiple summary judgment motions filed by both parties.  The key takeaway from that decision is that the case is now teed-up for trial beginning on February 19. But the Court didi highlight some key issues likely to be the focus of the trial.

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Did Corcept and Teva tell the Court they are about to settle the Korlym patent dispute?

On January 10, counsel for Corcept ($CORT) filed a letter with the Court in the pending patent litigation against Teva ($TEVA) over its proposed generic for Korlym®.  (See Dkt. 49).  Within that letter, Corcept requested an extension of one week to respond to Teva’s Answer to the Amended Complaint.  Corcept’s letter further stated that the “parties are currently discussing a potential agreement that would eliminate the need for Corcept to respond to Teva’s Answer . . . .”  Is that potential “agreement” a resolution to the litigation?

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Why Apple's Damages Dodge Matters for Patent Values...

Sophisticated defendants like Apple have three chances (jury, judge, appeals court) to “win” on damages, or to at least allow the litigation process to set the appropriate settlement range for any patent claim. It is a gauntlet for a patent owner to run, but it also confirms that any patent valuation that is not conducted through a litigation lens is likely as worthless as a big-ticket jury verdict based on erroneous expert testimony.

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Markman Advisors
Will Celgene and Dr. Reddy’s settle the Revlimid dispute now that Bristol Myers is at the table?

Celgene ($CELG) has announced plans to be acquired by Bristol Meyers Squibb ($BMY).  A settlement conference is scheduled in the Hatch-Waxman patent case between Celgene and Dr. Reddy’s on January 10, 2019.  Now that Bristol Meyers is at the table, will the parties be able to reach a settlement that couldn’t be reached before?

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