Federal Circuit Reverses Course: Certain IPR Institution Decisions Now Appealable

Yesterday, the Federal Circuit ruled en banc that decisions by the Patent Trial and Appeal Board (“PTAB”) concerning the timeliness of inter partes review petitions under 35 U.S.C. § 315(b) can be appealed.  Wi-Fi One, LLC v. Broadcom Corp.  As we previously reported here, a Federal Circuit panel previously held that 35 U.S.C. § 314(d) […]

State University’s Filing of Patent Infringement Action Waives Sovereign Immunity to IPR Proceedings

The Patent Trial and Appeal Board (“PTAB”) recently held that sovereign immunity under the Eleventh Amendment is waived in the context of inter partes review (“IPR”) by a state’s filing of a patent litigation in federal court.  Ericsson Inc. v. Regents of the University of Minnesota, IPR2017-01186, Paper No. 14. The PTAB first addressed whether […]

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

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

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

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

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

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

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. […]