Intellectual Property

The Difficulties Of Defending IPR Win On Appeal

The Federal Circuit has reversed or remanded inter partes review rulings because the Patent Trial and Appeal Board's analysis is flawed or incomplete. It may not matter what kind of record a victorious party made at the PTAB because only the decision is the subject of appeal, says James Gumina of McDonnell Boehnen Hulbert & Berghoff LLP.

Reasons To Limit Inventor Testimony In Hatch-Waxman Cases

Inventor testimony inevitably forms a part of every generic drug company’s case in a Paragraph IV obviousness challenge under the Hatch-Waxman Act. This is odd because recent cases demonstrate that inventor testimony can damage a generic defendant’s case, says Michael Hogan of Caesar Rivise PC.

Innovative And Ineligible: Diagnostic Patents At Fed. Circ.

The Federal Circuit's decision last week in Athena v. Mayo is significant because it demonstrates the uncertainty surrounding what actually qualifies as a “natural law,” and because it holds diagnostic methods ineligible for patenting even though they recite new and nonobvious concrete steps, says Alan Craig Townsley of Sughrue Mion PLLC.

Fresh Takes On Seeking Costs And Fees Under Rule 45

Recent case law reveals that courts vary widely in their approaches to shifting the costs and fees incurred in responding to a Federal Rule of Civil Procedure 45 subpoena. Nonparties responding to such requests should consider certain district court trends, say attorneys at Pepper Hamilton LLP.

Opinion

For Now, Competitive Generic Therapy Exclusivity Is A Mirage

In 2017, Congress tried to solve the problem of high drug prices caused by inadequate generic competition, creating a new form of market exclusivity known as competitive generic therapy exclusivity. But the statute has an unintended loophole, say Sinchan Shah of Amneal Pharmaceuticals Pvt. Ltd., and Jaimin Shah and Steve Auten of Taft Stettinius & Hollister LLP.

Series

Judging A Book: Smith Camp Reviews 'Echo Of Its Time'

"Echo of Its Time" is the story of Nebraska’s federal district court from statehood in 1867 to the demise of Prohibition in 1933. Professors John Wunder and Mark Scherer have written an objective, unsentimental and insightful history, layered with context and rich in character study, says U.S. District Judge Laurie Smith Camp of the District of Nebraska.

USPTO Rebukes High Court's Approach To Abstract Ideas

The U.S. Patent and Trademark Office's new subject matter eligibility guidelines help to return some level of predictability to patent law, but the U.S. Supreme Court may move quickly to effectively nullify the new test, if the court desires to maintain its 2014 Alice v. CLS Bank decision, says Chris Rourk of Jackson Walker LLP.

Petrella's Inconsistent Impact On Copyright Damages

The U.S. Supreme Court's Petrella v. Metro-Goldwyn-Mayer rule for copyright infringement damages has recently been a source of disagreement among district courts within the Second Circuit, say Jonathan Bloom and Dorian Simmons of Weil Gotshal & Manges LLP.

A Window Into PTAB Derivations

Derivation proceedings under the America Invents Act are new and untested. As we await the Patent Trial and Appeal Board's first derivation decision — in Andersen v. GED — attorneys with Hunton Andrews Kurth LLP look at the purpose of these proceedings and how they compare to other PTAB trials.

Time To Reassess Employee Nonsolicitation Clauses In Calif.

With its recent order in Barker v. Insight Global, a California federal court bolstered the argument that employee nonsolicitation clauses are unenforceable under state law. As a result, employers need to carefully consider eliminating such provisions from their contracts, says James Witz of Littler Mendelson PC.