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Posts tagged Federal Circuit
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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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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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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Does Alice require fact questions or not? The Federal Circuit appears split.

Earlier this year, the Federal Circuit issued two precedential decisions that were predicted to stem the tide of early dismissals based upon Alice motions.  The cases were  Berkheimer v. HP and Aatrix Software v. Green Shades Software, and there were both deemed precedential by the Federal Circuit.  A recent concurrence at the Federal Circuit, however, shows that the Court may be splitting over the rationale underpinning Berkheimer and Aatrix, and that split may be heading for the Supreme Court. 

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The Federal Circuit sends a message about attorneys’ fees in Spineology v. Wright Medical

A recent precedential decision from the Federal Circuit sheds important light on how the Court views attorneys fees in patent cases.

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Will MorphoSys’ Darzalex patent case against Janssen make it to trial, or be stopped at summary judgment?

The Darzalex® patent case commenced by MorphoSys against Janssen is headed towards trial.  Before that, however, the parties recently filed a series of summary judgment motions, and on December 3, 2018, the Court heard oral argument.  Will the Court moot the trial by granting Janssen’s motions to invalidate the patents?

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What are the takeaways from Unified Patents v. Realtime, the PTAB’s first post-AIT RPI decision?

The PTAB has issued its first post-AIT decision, Unified Patents, Inc. v. Realtime Adaptive Streaming, LLC.  In Realtime, the Patent Owner sought to defeat institution by arguing that Unified has run afoul of the AIT decision by failing to identify all RPIs, namely, its members.  The PTAB disagreed and instituted Unified’s IPR.  (The institution decision was entered in October, but the redacted decision issued on November 27, 2018).  How do we square the AIT decision with the Realtime decision?  Will third-party filers, such as Unified and RPX, no longer face RPI issues?

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The CAFC Curbs Personal Jurisdiction For Declaratory Judgment Actions.

A recent precedential case by the Federal Circuit, Maxchief Investments, Ltd. v. Wok & Pan, Ind., Inc., shows that the risk of a DJ action resulting from a pre-suit notice letter may be less troubling for a different reason than the one that preceded TC Heartland—namely, personal jurisdiction.

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A very important CAFC decision for induced infringement: Enplas Display v. Seoul Semiconductor

Today, the Federal Circuit issued an important precedential decision for induced infringement.  The case, Enplas Display Device Corp. v. Seoul Semiconductor Co., Ltd., Case No. 2016-2599 (Fed. Cir. Nov. 19, 2018), indicates that defendants that manufacture and sell components abroad cannot so easily evade induced infringement by claiming ignorance that their products end up within the U.S. market. 

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If Hatch-Waxman cases are governed by TC Heartland, will that lead to “generic friendly” districts?

Mylan ($MYL) recently prevailed on a motion to dismiss for improper venue in a pending Hatch-Waxman case for the drug Eliquis®.  Mylan successfully argued that Delaware was an improper venue under the recently test for venue in patent cases enunciated by the Supreme Court in TC Heartland.  What are the implications of TC Heartland governing venue in all Hatch-Waxman cases?  Will it lead to “generic friendly” judicial districts?

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UC loses the CRISPR-Cas9 patent appeal—now what?

The CRISP-Cas9 saga has effectively come to an end.  For now.  On September 10, the Federal Circuit affirmed the decision of the PTAB dismissing the interference between UC and Broad.  What are the implications for UC’s patents? What are the chances UC can successfully appeal to the Supreme Court?

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Can Unified Patents survive the Federal Circuit’s RPI decision?

The Federal Circuit recently issued a strong decision instructing the PTAB to rethink the way that it decides who is an RPI (real-party-in-interest).  While the decision involved RPX, it presents a more existential threat to Unified Patents, which has risen as one of the most prolific non-party filers of IPRs.  Can Unified survive the CAFC’s RPX decision?

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Yes, Judge Plager’s admonishment that district courts stop applying Alice does matter.

 On July 20, in an otherwise unremarkable opinion, the Honorable S. Jay Plager issued a stinging dissent that should resound throughout the patent community—and may, in fact, resound throughout district courts.  See Interval Licensing LLC v. AOL, Inc., No. 2016-2502 (July 20, 2018).  Interestingly, Judge Plager did not dissent from the majority’s holding itself, but rather concurred in the reasoning of the majority.  Instead, and importantly, he dissented in the Federal Circuit’s “continued application of [Alice’s] incoherent body of doctrine.” Judge Plager’s dissent is nothing short of a recommendation that district courts stop applying the Alice doctrine, at least not until resolution of other defenses in the case. Does that matter?

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Has the entire-market-value rule survived the CAFC’s decision in Power Integrations v. Fairchild?

Every year, it seems, the Federal Circuit issues a precedential decision on damages, which seems to make the whole process more difficult.  The latest of these decisions comes in the long-running patent battle between Power Integrations and Fairchild.  In its latest opinion, the Court addresses the entire-market-value rule.  The Court essentially guts the rule, and leaves open the question whether there is an reasonable scenario where it will ever be applicable.

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Takeaways from the Tribe’s Oral Argument at the Federal Circuit: St. Regis Mohawk Tribe v. Mylan

On June 4, 2018, the Federal Circuit heard oral argument in Allergan’s effort to assert tribal immunity at the PTAB to shut down six IPRs against its Restasis® patents.  The St. Regis Mohawk Tribe has appealed the PTAB’s prior decision that it cannot assert its immunity as a basis to terminate the IPRs.  While there was no clear indication for how the three-judge panel at the Federal Circuit would rule, there were some interesting exchanges revealing how the Court views these types of transactions, and how viable they may be in the future.

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Can Kite Pharma reverse its IPR loss challenging Juno’s CAR-T patent?

On June 5, 2018, the Federal Circuit will hear oral argument on Kite Pharma’s ($GILD) appeal of its IPR loss related to Sloan-Kettering’s and Juno Therapeutic’s ($CELG) CAR-T patent.  What issues will it be important to listen for in the panel’s questions?

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CRISPR-Cas9: After oral argument, Broad likely to prevail—but is it failure of the patent system?

On April 30, the Federal Circuit convened oral argument in the highly-watched patent case between UC and Broad over the interference proceeding covering patents for CRISPR-Cas9.  (An overview of the case and the respective arguments were published in an earlier post.)  The hotly-contested argument suggests the Court is leaning towards Broad, but raises deeper questions about whether this is a success or failure for the patent system.

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Who will win the CRISPR-Cas9 appeal at the Federal Circuit?

The epic CRISPR-Cas9 patent dispute has reached the Federal Circuit.  UC previously lost its bid to the Patent Office to eviscerate Broad’s patents through an interference proceeding.  That decision is now on appeal.  The briefing at the Federal Circuit is complete, and oral argument is scheduled for April 30, 2018.  Who will win at the Federal Circuit—UC or Broad? 

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