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Patent Law

Patent Docs

Focuses on recent developments in biotechnology and pharmaceutical patent law, offering updates regarding changes in Patent Office rules and procedures that affect biotech/pharma patent prosecution, providing summaries of recent court decisions that impact biotech/pharma patent litigation and prosecution, and monitoring newly filed biotech/pharma patent litigation. In addition, Patent Docs highlights recently issued biotech/pharma patents, and reports on biotech/pharma news.
By Donald Zuhn, Kevin Noonan, Chris Singer, Sherri Oslick, and Jason Derry

Post Frequency: 20.5/day

Last Entry: April 01, 2011 at 01:59:00

Court Report

Posted on May 24, 2010
By Sherri Oslick -- About Court Report: Each week we will report briefly on recently filed biotech and pharma cases. Medicis Pharmaceutical Corp. v. Nycomed US Inc. et al. 1:10-cv-00419; filed May 19, 2010 in the District Court of Delaware ? Plaintiff: Medicis Pharmaceutical Corp...

Conference & CLE Calendar

Posted on May 24, 2010
May 24-25, 2010 - Hatch-Waxman Boot Camp*** (American Conference Institute) - San Diego, CA May 24-26, 2010 - Pharmaceutical & Biotech Patent Litigation Strategies*** (Pharma IQ) - London, England May 25, 2010 - "The Gene Uncertainty: What to Do After Myriad" (Intellectual Property Owners Association) - 2:00 PM (EST) May 25, 2010 - Corporate Intellectual Property Law Conference (Law Bulletin) - Chicago, IL May 26-27, 2010 - 7th International Forum on Freedom to Operate (C5) - Munich, Germany June 1, 2010 - Biotechnology/Chemical/Pharmaceutical (BCP) Customer Partnership Meeting (U...

Chisum Patent Academy Patent Law Training Workshop

Posted on May 22, 2010
The Chisum Patent Academy will offer its second annual Intensive Patent Law Training Workshop on on July 29-31, 2010 in Seattle, WA. The workshop will focus on substantive patent law (patentability and enforcement) through analysis of critical Federal Circuit and Supreme Court decisions...

Biotech/Pharma Docket

Posted on May 21, 2010
By James DeGiulio -- Covidien's Patent for Restoril Found Obvious Covidien PLC suffered a setback in its infringement suit with URL Pharma Inc. after the claims of its patent for sleep aid Restoril were found obvious. In March 2007, Tyco Healthcare Group LP, now Covidien, brought suit against Pharmaceutical Holdings Corp...

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In re Ciprofloxacin Antitrust Litigation (2d Cir. 2010)

Posted on May 21, 2010
By Kevin E. Noonan -- On April 29th, the U.S. Court of Appeals for the Second Circuit ruled that the "pay-for-delay" agreement between defendants Bayer AG and several generic drugmakers (including The Rugby Group, Watson Pharmaceuticals Inc., and Barr Laboratories Inc...

DOJ, FTC and USPTO to Hold Workshop about Promoting Innovation

Posted on May 21, 2010
By Sarah Fendrick -- The Department of Justice, Federal Trade Commission, and U.S Patent and Trademark Office have announced that they will be holding a joint public workshop on the intersection of patent policy and competition policy and its implications for promoting innovation...

USPTO Provides Contingency Option for EFS-Web

Posted on May 20, 2010
By Donald Zuhn -- The U.S. Patent and Trademark Office announced today that it is providing a new contingency option for its electronic filing system (EFS-Web) for use when the primary portal to the EFS-Web has an unscheduled outage. In a notice published in the Federal Register (75 Fed...

U.S. Trade Representative Releases Special 301 Report on Global IPR

Posted on May 20, 2010
By Kevin E. Noonan -- At the end of last month, the U.S. Trade Representative, Ron Kirk, issued the 2010 Special 301 Report, which according to the USTR website "reflects the Administration's resolve to encourage and maintain effective [Intellectual Property Rights (IPR)] protection and enforcement worldwide" by identifying "a wide range of serious concerns, ranging from troubling 'indigenous innovation' policies that may unfairly disadvantage U...

HIF Bio, Inc. v. Yung Shin Pharmaceuticals Industrial Co. (Fed. Cir. 2010)

Posted on May 19, 2010
By Kevin E. Noonan -- It has been a staple of introductory civil procedure exams to include a complicated fact pattern that, at root, leads to a determination that the lawsuit should be dismissed for failure to state a claim for which relief can be granted...

New USPTO Fee-Setting Bill Introduced in House

Posted on May 19, 2010
By Donald Zuhn -- In the face of strong opposition, the House of Representatives declined to bring a bill that would provide the U.S. Patent and Trademark Office with fee-setting authority to the floor for a vote during today's legislative business session...

House to Vote on Bill That Would Give USPTO Fee-Setting Authority

Posted on May 18, 2010
By Donald Zuhn -- Earlier today, the Intellectual Property Owners Association (IPO) reported that new legislation that would provide the U.S. Patent and Trademark Office with fee-setting authority will be brought to the floor of the House of Representatives for a vote during its legislative business session on Tuesday...

Ortho-McNeil Pharmaceutical, Inc. v. Lupin Pharmaceuticals, Inc. (Fed. Cir. 2010)

Posted on May 17, 2010
By Kevin E. Noonan -- In Ortho-McNeil Pharmaceutical, Inc. v. Lupin Pharmaceuticals, Inc., the Federal Circuit has rendered a decision on the question of whether separate enantiomers can have "first commercial marketing or use" status for purposes of patent term extension under 35 U...

Therasense, Inc. v. Becton, Dickinson & Co. -- Briefing Schedule Update

Posted on May 17, 2010
By Donald Zuhn -- Last month, the Court of Appeals for the Federal Circuit decided that the appeal in Therasense, Inc. v. Becton, Dickinson & Co. warranted en banc consideration, and asked the parties to brief ten questions concerning the issue of inequitable conduct (see "Federal Circuit Grants En Banc Review in Therasense v...

Conference & CLE Calendar

Posted on May 17, 2010
May 18, 2010 - "The Role of Patent Agents in Intellectual Property in the Changing Economy" (Intellectual Property Law Association of Chicago) - Chicago, IL May 20, 2010 - "The Federal Circuit: A National Court of Appeals: Approaching 30 Years" (U.S. Court of Appeals for the Federal Circuit) - Washington, DC May 24-25, 2010 - Hatch-Waxman Boot Camp*** (American Conference Institute) - San Diego, CA May 24-26, 2010 - Pharmaceutical & Biotech Patent Litigation Strategies*** (Pharma IQ) - London, England May 25, 2010 - "The Gene Uncertainty: What to Do After Myriad" (Intellectual Property Owners Association) - 2:00 PM (EST)...

USPTO Announces Agenda for Next BCP Customer Partnership Meeting

Posted on May 15, 2010
The U.S. Patent and Trademark Office has announced the agenda for the next biotechnology/chemical/pharmaceutical (BCP) customer partnership meeting to be held on June 1, 2010. The proposed agenda is as follows: Morning Session ? Greetings and Overview (10:00 - 10:15 am EDT): George Elliott and Remy Yucel, Directors, Technology Center 1600 ? Reexam Best Practice (10:15 - 11:15 am): CRU ? Ombudsman (11:15 am - 11:40 pm): Valencia Martin-Wallace, Director, TC2400 ? Break (11:40 - 11:55 pm) ? Information Disclosure Statement (11:55 am - 12:40 pm): Julie Burke, QAS, TC1600 ? Lunch (12:40 ? 1:50 pm) Afternoon Session ? Restriction...

Gene Patenting CLE

Posted on May 15, 2010
The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled: "The Gene Uncertainty: What to Do After Myriad" on Tuesday, May 25, 2010 beginning at 2:00 PM (EST). The IPO webinar will present a panel of experts in biotech patent prosecution and litigation that will examine options for companies having gene patents or planning to file for gene patents after the decision Association for Molecular Pathology v...

C5 Maximising Pharmaceutical Patent Life Cycles Conference

Posted on May 15, 2010
C5 (UK) will be holding its 9th Annual International Maximising Pharmaceutical Patent Life Cycles conference on June 23-24, 2010 in London, England. The conference will provide insights on: ? How to profit from the latest regulatory protections available to extend patent lifecycles; ? How to adjust patent strategy to developments in key pharma patent cases in the UK and Europe; ? The scope of SPC protection and analysis of key definitions in SPC Regulation that have given rise to litigation; ? How second medical use claims and dosage regimes can be used to extend patent lifecycles: Consequences of G2/08; ?...

Biotech/Pharma Docket

Posted on May 14, 2010
By James DeGiulio -- Medicis Settles Solodyn Infringement Case with Ranbaxy Medicis Pharmaceutical Corp. has reached consent and licensing agreements with Ranbaxy Laboratories Inc., thus settling patent infringement claims against Ranbaxy over Medicis' oral acne drug Solodyn...

Therasense, Inc. v. Becton, Dickinson & Co. Briefing

Posted on May 14, 2010
On April 28, the Court of Appeals for the Federal Circuit granted the petition for rehearing en banc submitted by Plaintiffs-Appellants Abbott Diabetes Care, Inc. (formerly Therasense, Inc.) and Abbott Laboratories in Therasense, Inc. v. Becton, Dickinson & Co...

Scantibodies Laboratory, Inc. v. Immutopics, Inc. (Fed. Cir. 2010)

Posted on May 13, 2010
By Andrew Williams -- Last week, in Scantibodies Laboratory, Inc. v. Immutopics, Inc., the Federal Circuit affirmed a claim construction decision and corresponding summary judgment of non-infringement rendered by the U.S. District Court for the Central District of California...

Docs at BIO: Steve Burrill's State of the Biotechnology Industry Report 2010

Posted on May 13, 2010
By Kevin E. Noonan -- Steve Burrill, President and CEO of Burrill & Co. took the stage at BIO 2010 in Chicago last week, and once again provided in 90 minutes his impressions and opinions on the state of the biotechnology industry. Although decidedly more upbeat than last year, Mr...

Patent Reform News Briefs

Posted on May 12, 2010
By Donald Zuhn -- Secretary of Commerce Writes in Support of S. 515 On April 20, Secretary of Commerce Gary Locke (at right) wrote to Senate Judiciary Committee Chairman Patrick Leahy (D-VT) and Ranking Member Sen. Jeff Sessions (R-AL), indicating that the Obama Administration strongly supported their efforts to reform U...

Biotech/Pharma Docket

Posted on May 11, 2010
By James DeGiulio -- Celgene and Novartis Reach Settlement with Barr Laboratories in Ritalin ANDA Suit Celgene Corp. and Novartis AG have reached a settlement with Barr Laboratories Inc. over Barr's attempt to market a generic version of the ADHD drug Ritalin...

Patent Profile: Hana Biosciences Receives Notice of Allowance for Use of Menadione to Treat EGFR Inhibitor-Associated Skin Rash

Posted on May 11, 2010
By Nate Chongsiriwatana -- Hana Biosciences, Inc. recently announced that it received a Notice of Allowance from the U.S. Patent and Trademark Office for U.S. Application No. 11/886,803, entitled "Vitamin K for Prevention and Treatment of Skin Rash Secondary to Anti-EGFR Therapy" (U...

Court Report

Posted on May 10, 2010
By Sherri Oslick -- About Court Report: Each week we will report briefly on recently filed biotech and pharma cases. Eli Lilly & Company v. Watson Pharmaceuticals, Inc. et al. 2:10-cv-00647; filed May 5, 2010 in the District Court of Nevada ? Plaintiff: Eli Lilly & Company ? Defendants: Watson Pharmaceuticals, Inc...

USPTO and Korean IP Office to Exapnd Patent Prosecution Highway Agreement

Posted on May 10, 2010
By Sarah Fendrick -- In a press release published on April 16, 2010, the U.S. Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO) announced the expansion of their existing bilateral Patent Prosecution Highway (PPH) agreement...

Conference & CLE Calendar

Posted on May 10, 2010
May 11, 2010 - Law Symposium on Intellectual Property (George Washington University Law School, Howrey LLP & Cornerstone Research) - Washington, DC May 18, 2010 - "The Role of Patent Agents in Intellectual Property in the Changing Economy" (Intellectual Property Law Association of Chicago) - Chicago, IL May 20, 2010 - "The Federal Circuit: A National Court of Appeals: Approaching 30 Years" (U...

Fundamentals of Patent Prosecution Seminar

Posted on May 08, 2010
Practising Law Institute (PLI) will be holding its Fundamentals of Patent Prosecution 2010: A Boot Camp for Claim Drafting & Amendment Writing seminar on June 16-18, 2010 in New York, NY and on July 7-9, 2010 in San Francisco, CA. According to PLI's website, the three-day program, which is directed to patent attorneys, litigation attorneys and patent agents with little patent experience, will focus on teaching the basics of claim drafting, patent application preparation and prosecution, as well as a review of recent developments in the law...

USPTO to Hold Roundtables on Patent Quality

Posted on May 07, 2010
By Sarah Fendrick -- Last week, the U.S. Patent and Trademark Office published a notice in the Federal Register (75 Fed. Reg. 22120) regarding two roundtables that the Office will be holding to obtain public input on methods that can be used to improve patent quality and the methods the Office uses to measure quality...

Deloitte White Paper Points to Recession as Turning Point for Life Sciences Industry; Indicates That Survival Will Depend on Innovation

Posted on May 06, 2010
By Donald Zuhn -- On Wednesday, while the biotech industry gathered in Chicago for the 2010 BIO International Convention, Deloitte Touche Tohmatsu (DTT) released a white paper suggesting that the global recession has likely permanently reshaped the life sciences industry...

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