Judge Lourie Questions Patentability of Product Claims Having Limitations Directed to Results and Not Structure

Posted at 21:48h December 11, 2017 in Indefiniteness, Intended result by Todd S. Werner
Share

Carlson Caspers successfully defended an indefiniteness verdict at the Federal Circuit in Forest Laboratories, Inc. v. Teva Pharmaceuticals USA, Inc.  The asserted claims were directed to extended-release formulations of memantine, and were listed in the Orange Book for Forest’s Namenda XR® product.  The applicants chose to define their formulation based on pharmacokinetic principles rather than […]

Judge Stark Offers Guidance on Venue Inquiry for Hatch Waxman Litigation

Posted at 22:24h December 6, 2017 in venue by Carlson Caspers
Share

Chief Judge Leonard Stark of the District of Delaware recently shed some light on the venue analysis in Hatch-Waxman litigation.  Bristol-Myers Squibb Company et al v. Mylan Pharmaceuticals Inc., No. 1-17-cv-00379 (D. Del. November 28, 2017).  Mylan moved to dismiss pursuant to Rule 12(b)(3), arguing that its corporate subsidiary and affiliate’s places of business cannot […]

Federal Circuit Limits the Power of Credibility Assessments, Lack of Commercial Availability, and Preference for Alternative Designs in Obviousness Analysis

Posted at 18:42h November 6, 2017 in Credibility assessments, Motion to combine, Obviousness, Teaching away by Iain A. McIntyre
Share

The Federal Circuit recently reversed a district court finding that a Bayer patent covering formulations of the erectile dysfunction (“ED”) drug vardenafil hydrochloride trihydrate (Levitra®) was not obvious.  Bayer Pharma AG et al. v. Watson Laboratories, Inc., et al. 2016-2169 (Fed. Cir. Nov. 1, 2017).  In reaching this decision, the Court found that the district […]

Blocking Patents May Minimize Probative Value of Blockbuster Sales in Obviousness Analysis

Posted at 18:15h October 25, 2017 in Blocking patents, Commercial Success by Caroline L. Marsili
Share

Last week, Federal Circuit Judge William Bryson, sitting by designation in the Eastern District of Texas, held that the claims of four of the six Orange Book-listed patents for Restasis® were invalid.  In reaching this decision, Judge Bryson discounted the extensive sales revenues of Restasis® offered by Allergan to demonstrate commercial success.  Allergan, et al. […]

Post-Priority-Date Evidence May Be Relevant to 35 U.S.C. § 112 Inquiry

Posted at 19:17h October 17, 2017 in Enablement, Post-priority date evidence, Written description by Nathan D. Louwagie
Share

Recently, the Federal Circuit reversed a jury decision upholding the validity of two Amgen patents directed to a large genus of antibodies that reduce LDL cholesterol. Amgen et al. v. Sanofi et al., No. 2017-1480.  Defendants argued that the patents failed to satisfy the written description and enablement requirements under 35 U.S.C. § 112.  The […]

Antitrust: Settlement of unrelated claim may be an unlawful reverse payment

Posted at 16:54h September 7, 2017 in Antitrust, Reverse payment by Matthew J. Goggin
Share

The Supreme Court in FTC v Actavis created a new species of antitrust liability when it held that reverse payments from a branded company to an ANDA filer, as part of a Hatch-Waxman settlement agreement, may be unlawful where the “basic reason is a desire to maintain and to share patent-generated monopoly profits.” 133 S. Ct. […]

PTAB Denies Joinder Where Petitioner Relied on Different Experts

Posted at 15:04h July 20, 2017 in IPR Proceedings, Joinder by Jonathan Carpenter
Share

A recent PTAB  order refused joinder of IPR petitions challenging the same formulation patent at issue in a previously instituted IPR proceeding despite almost complete overlap between the challenged claims and reliance on the exact same prior art.  Famy Care Ltd. v. Allergan, Inc., IPR2017-00566, Paper 12, (PTAB July 12, 2017).  The patent at issue […]

ANDA Litigants May Use “Post Art” to Support or Challenge Patent Validity

Posted at 17:33h July 7, 2017 in expert reports, Invalidity by Carlson Caspers
0 Comment Share

Last week, in Novartis, et al., v. West-Ward Pharmaceuticals International Limited, the District of Delaware denied Defendant’s motion in limine seeking to exclude “post art” evidence, i.e. references published after the critical date, as irrelevant and prejudicial.  In its order, the court remarked that though there are some limitations, post art can be offered for […]