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Intellectual Property Law Monthly Review

1.0 Centillion Data Systems v. Qwest Communications

Centillion Data Systems, LLC (Centillion) appeals from the district court’s grant of summary judgment to Qwest Communications International, Inc. (Qwest) that various claims of U.S. Patent No. 5,287,270 (270 patent) are not infringed. Centillion also challenges the award of costs to Qwest. Because the district court erred in concluding that there is no genuine factual dispute regarding infringement by one of the two accused products, but did not err with respect to the other product, we affirm-inpart and reverse-in-part the judgment of noninfringement, vacate the award of costs, and remand for further proceedings. More

2.0 Teva and Mylan Settle Copaxone(R) Patent Litigation in France, the UK and the Netherlands

Teva Pharmaceutical Industries and Mylan Inc. announce that certain of their affiliates have agreed to settle and dismiss pending patent litigation involving Copaxone(R) (glatiramer acetate) in the United Kingdom, the Netherlands and France relating to non-infringement and the validity of European Patent 0,762,888, which expires in May 2015. The terms of the settlement are confidential. More

3.0 Online Retailer Newegg Ordered to Pay Patent Trolls $2.3 Million

A jury has ordered online retailer Newegg to cough-up $2.3 million as part of a closely watched patent dispute with a company called TQP Development. Newegg plans to appeal, TQP Development is a patent assertion entity, aka a patent troll ‘ a company that owns patents and asserts them against others but doesn’t actually use them in products of its own. But this isn’t just any patent troll. The company is owned by a’ patent lawyer Erich Spangenberg, the man behind IPNav, a firm that has sued over 1,638 companies for patent infringement, according to the New York Times.TQP Development itself has sued a hundreds of tech companies ‘ including Apple, Google, Intel and Samsung ‘ over the same encryption patent, which was filed in 1989 by a man named Michael Jones. All of these companies have settled out of court, and Spangenberg told Ars Technica last summer that the suits have made TQP around $40 million dollars. Newegg was the only company to challenge the patent claim in court, and experts such as Whitfield Diffie, the creator of public key encryption, testified on its behalf. Diffie says that the patent in question wasn’t relevant to type of encryption used by web companies such as Apple and Google, who relied on techniques older than the Jones patent. Experts like Lotus Notes creator and former Microsoft CTO Ray Ozzie also testified in support of Newegg, presenting examples of prior art, such as the algorithms underlying Secure Socket Layer ‘ the encryption system most commonly used on the web ‘ and Lotus Notes. More

4.0 Myriad Sues Fifth Rival on Patent-Infringement Grounds

  • Inviteehas become the fifth genetic diagnostic test developer since July to be sued on patent-infringement grounds by Myriad Genetics. Myriad has asked the U.S. District Court for the District of Utah for temporary and permanent injunctions against Invitae from selling or using products it says infringe on 11 patents held by Myriad and other assignees; as well as damages, and the delivery to Myriad of all products it believes infringe the patents. The 11 patents ‘ which cover tests for BRCA and MUTYH ‘ are held by Myriad with other assignees, including the University of Utah Research Foundation, the Trustees of the University of Pennsylvania, an entity affiliated with Toronto’s Hospital for Sick Children, and Canadian company Endorecherche.’ More

5.0 Purdue’s Bid To Split OxyContin Patent Suit Gets Rejected

A New Jersey federal judge on Tuesday declined to split into two phases any such trial in Depomed Inc.’s suit alleging Purdue Pharma LP’s pain reliever OxyContin infringed on three of its patents for extended-release drug technology, saying bifurcation isn’t warranted. U.S. District Judge Tonianne J. Bongiovanni denied Purdue’s motion to bifurcate the trial into two phases ‘ one to determine liability on the alleged patent infringement and one for damages ‘ and rejected Purdue’s argument that the case is so highly complex that a jury would need to weigh liability and damages at separate turns. The case is still in the early stages of proceedings, given that Depomed launched suit in January and the parties have only begun to exchange documents and engage in fact discovery, according to the opinion.’ More

6.0”UKIPO Decides on Correct Term of an SPC

A recent UKIPO decision will extend the term of SPCs by a few days.  The decision concerned Genzyme Corporation’s product colesevelam hydrochloride, which was the subject of an SPC.  Genzyme disputed the term of the SPC on two grounds. First, Genzyme argued that the term of the SPC should be calculated using the date of notification of the relevant marketing authorisation, rather than the date of the decision itself.  The term of an SPC is calculated as the duration between the date on which the application for a basic patent was lodged and the date of the first authorisation to place the product on the market in the Community, reduced by a period of five years.  However, every marketing authorisation has two dates, namely the date of the decision and the date of notification (which can be up to four days later).” More

7.0 Turkey Frying Safety

This year the first patent I profile, is U.S. Patent No. 8,256,130, which is titled an apparatus and method for pre-measuring turkey frying oil. Someone has finally patented a way to properly measure the amount of oil used when frying a turkey. We can only hope this saves a home or two from the inevitable Thanksgiving disaster caused by filling the turkey fryer to the top and then lowering the bird into the pot, which causes the oil to overflow and ignite thanks to the open flame. To solve the problems of overflowing oil, Edward Lee Jantz, the inventor of the invention embodied in the ‘130 patent, came up with a Turkey Oil Frying Gauge, which is placed in a turkey frying pot and frying oil and used to indicate the proper level of oil for the weight of the turkey being cooked and for the size pot being used.’ More

8.0 Actavis Announces Tentative Agreement Related to Asacol® HD Patent Challenge Litigation

Actavis, a leading specialty pharmaceutical company, today announced that it its subsidiary, Warner Chilcott Company, LLC, has entered into an agreement in principle with Zydus Pharmaceuticals USA Inc. and Cadila Healthcare Limited to settle all outstanding patent litigation related to Zydus’ generic version of Asacol® HD (mesalamine) delayed-release tablets.  The agreement remains subject to preparation and execution of definitive documentation.Under the terms of the agreement in principle, Warner Chilcott Company will grant Zydus a royalty-bearing license to market its generic Asacol® HD beginning on November 15, 2015 or earlier under certain circumstances, following receipt by Zydus of final approval from the U.S. Food and Drug Administration (FDA) on its Abbreviated New Drug Application (ANDA) for generic Asacol® HD.Alternatively, if Zydus does not receive FDA approval of its generic Asacol® HD by July 1, 2016, Zydus will be permitted to launch an authorized generic version of Actavis’ product beginning on July 1, 2016.  Other terms of the settlement were not disclosed.

9.0 Actavis Confirms Generic Axiron® Patent Challenge

Actavis plc confirmed that it has filed an Abbreviated New Drug Application (ANDA) with the U.S. Food and Drug Administration (FDA) seeking approval to market Testosterone Topical Solution, 30mg/1.5mL.  Actavis’ ANDA product is a generic version of Eli Lilly and Company’s Axiron®, which is an androgen indicated for replacement therapy in males for conditions associated with a deficiency or absence of endogenous testosterone.Eli Lilly and Company and Acrux DDS Pty Ltd. filed suit against Actavis on November 12, 2013, in the U.S. District Court for the Southern District of Indiana seeking to prevent Actavis from commercializing its ANDA product prior to the expiration certain of U.S. patents.  The lawsuit was filed under the provisions of the Hatch-Waxman Act, resulting in a stay of final FDA approval of Actavis’ ANDA for up to 30 months from the date the plaintiffs received notice of Actavis’ ANDA filing or until final resolution of the matter before the court, whichever occurs sooner, subject to any other exclusivities.Based on available information, including a submission date listed on FDA’s Paragraph IV Patent Certifications web site that is consistent with the date of Actavis’ ANDA filing, Actavis believes it may be a “first applicant” to file an ANDA for a generic version of Axiron® and, should its ANDA be approved, may be entitled to 180 days of generic market exclusivity.For the 12 months ending September 30, 2013, Axiron’ had total U.S. sales of approximately $257 million, according to IMS Health data.

10.0’EU pharma patent settlements continuing to rise

183 patent settlements between originator and generic drugmakers were concluded in the European Union (EU) in 2012, compared to 120 in 2011, but last year’s total drops to 125 when those relating to new legal provisions in Portugal are excluded.’ More

11.0’Apotex Defeats Sanofi Bid to Block Generic Arava in Australia

Apotex Pty defeated Sanofi (SAN), France’s biggest drugmaker, in an Australian patent dispute over the rheumatoid arthritis drugs Arava and Arabloc, with the country’s highest court ruling for the first time on the patentability of medical treatments for humans.The High Court of Australia said in a majority decision today that Apotex, a Canadian maker of generic drugs, didn’t infringe Sanofi’s patents. It overturned two lower court rulings that sided with the French drugmaker and blocked Apotex sales of generic copies in the country. More

12.0’IPAB revokes patent of US-based Kibow Biotech

The Intellectual Property Appellate Board (IPAB) has revoked a patent of US-based biotech firm Kibow Biotech Inc in India, titled ‘Prebiotic and Probiotic Compositions and Methods for their Use in Gut-Based Therapies’, finding that the invention claimed is obvious. The order was on a revocation application filed by Gujarat-based La Renon Health Care Pvt Ltd.” More

13.0’IPAB orders in favour of a patent of Kibow Biotech

The Intellectual Property Appellate Board (IPAB) has dismissed an application filed by La Renon Health Care Pvt Ltd against a patent granted to US-based Kibow Biotech Inc, for a probiotic dietary supplement sold as Renadyl.It may be noted that the IPAB, in another order, has revoked another patent of Kibow Biotech Inc titled ‘Prebiotic and Probiotic Compositions and Methods for their Use in Gut-Based Therapies’, finding that the invention claimed is obvious.” More

14.0””’ Biocon ups generic war with nod for Roche’s cancer drug clone

Two months after the Swiss innovator firm Roche threw in a surprise by announcing that it would no longer pursue a patent on breast cancer drug Herceptin in India, it will have to brace up for generic competition, probably much earlier than it anticipated.Bangalore-based Biocon has got an approval for making the drug from the central drug regulator, according to a list of new drugs approved by the Drug Controller General of India’s office, reviewed by ET. Biocon officials confirmed the development to ET but didn’t shed light on how soon the company would be ready to bring the biosimilar to the market.’ More

15.0’Novartis takes on Roxane Laboratories over drug application

Novartis Pharmaceuticals has filed a lawsuit against US drug manufacturer Roxane Laboratories disputing an application for a schizophrenia drug.Novartis is claiming that an Abbreviated New Drug Application (ANDA) from Roxane would infringe claims on a patent it owns.According to the complaint, filed on November 27 at the US District Court for the District of New Jersey, Novartis holds a licence on oral tablets for the ‘acute treatment’ of adults with schizophrenia. The tablets, called FANAPT, contain the ingredient iloperidone and have been approved by the US Food and Drug Administration (FDA).” More

16.0’Massive Litigation Spike in Response to America Invents Act

There has been much discussion about the so-called massive growth of patent litigation in the United States. Those that are pressing for further reforms of the patent system complain that litigation is rampant and something needs to be done to stop it. This is all despite an August report by the independent Government Accountability Office that concluded that there was not a problematic rise in patent litigation and that really nothing needed to be done. See GAO Report Finds No NPE Litigation Crisis and GAO Report Unmasks Mythical Patent Troll Problem.

17.0’CreAgri’s Supplement Patent Invalidated For Lack Of Data

A California federal judge tossed claims that nutritional supplement company Pinnaclife Inc. infringed competitor CreAgri Inc.’s patents for olive-based, anti-inflammatory supplements, ruling Wednesday that CreAgri didn’t know the supplement would reduce inflammation when it filed the patent.U.S. District Judge Lucy H. Koh invalidated two patents held by CreAgri, which sells dietary supplements with antioxidants derived from olives. One CreAgri patent, U.S. Patent No. 8,216,599, outlined a method for treating inflammation of the heart, brain and lungs using the compounds.”’ More

18.0’Cephalon Sues Hetero Over Generic Leukemia Drug

Cephalon Inc. filed suit in Delaware federal court Thursday alleging rival Hetero Labs Ltd.’s plans to manufacture a generic form of its cancer treatment Treanda violated a patent for the drug, the second infringement suit the Pennsylvania-based pharmaceuticals maker has brought over Treanda in two months.’ More

19.0””’ In re Eaton (Fed. Cir. 2013)

The Federal Circuit reversed a determination by the Patent Trial and Appeal Board affirming the rejection of the claims 1, 8-11, and 14 of U.S. Application No. 11/145,716 as anticipated by DE Patent No. 10053155 A1 (“Jungkeit”) and as obvious in view Jungkeit and U.S. Patent No. 6,107,349.  The ‘716 application is directed to a method of treating psoriasis by administering a multiple vitamin supplement composition, wherein the claims at issue in the appeal recite a vitamin supplement composition of folic acid, vitamin B12, and vitamin B6.  Representative claim 1 recites.’ More

20.0’Diageo Shells Out $81M To Settle Aussie, NZ Thalidomide Suits

Diageo PLC agreed Monday to pay AU$89 million (US$81 million) to settle class action claims brought by Australians and New Zealanders with birth defects allegedly caused by the morning sickness drug thalidomide.The U.K.-based alcohol producer’s agreement resolves two class actions brought in Australian court on behalf of more than 100 people who suffered birth defects and other injuries after their mothers took thalidomide during pregnancy, according to the law firms Slater & Gordon and Gordon Legal, which represent the victims.

21.0’AstraZeneca Gets $76M in Prilosec Case

AstraZeneca today announced a ruling by the US District Court for the Southern District of New York which ordered Apotex Corp., Apotex, Inc and Torpharm, Inc. (‘Apotex’) to pay AstraZeneca approximately $76 million in damages. This ruling is a result of Apotex’s infringing sales of generic omeprazole between 2004 and 2007. This follows a previous ruling in 2007 that found two Prilosec® (omeprazole) formulation patents valid and infringed by Apotex.’ More

22.0 Samsung Seeks Patent on Voice Activated Search and Control

The featured patent application today focuses on a developed system of interacting with a mobile device that has been pursued by many device manufacturers recently. This system is capable of receiving vocal inputs from a user and converting that speech into a digital command that can be processed by the device. Other patent applications that we’ve noticed include a couple of improvements to image applications available for mobile devices, including a method of creating a 3D representation of a photo gallery.’ More

23.0”Fed. Circ. Affirms Hanmi Win In Generic Nexium Patent Suit

The Federal Circuit on Thursday found that Hanmi Pharmaceutical Co. Ltd.’s generic version of AstraZeneca AB’s acid reflux drug Nexium does not infringe two of AstraZeneca’s patents, upholding a lower court’s construction of a key term in one of the patents.In a unanimous decision, a three-judge panel affirmed U.S. District Judge Joel A. Pisano’s claim construction ruling regarding AstraZeneca’s U.S. Patent Numbers 5,714,504 and 5,877,192. AstraZeneca and Hanmi had previously agreed that Hanmi’s generic Nexium does not infringe the patents under Judge Pisano’s construction. More

24.0”$4.75M Ferring, Aventis Antitrust Settlement Earns Approval

A $4.75 million settlement that Ferring BV and Aventis Pharmaceuticals Inc. struck with indirect purchasers of an antidiuretic won approval from a New York federal judge Wednesday, ending a class action accusing the drugmakers of suppressing the drug’s generic competition by illegitimately obtaining a patent.U.S. District Judge Cathy Seibel signed off on the deal, which also called for the class attorneys to receive $1.5 million in fees and nearly $104,000 in expenses from the settlement fund, despite objections from a group of insurance companies, including Aetna Inc. and Cigna Inc., who questioned whether the deal was just.’ More

25.0”Are Multiple SPCs per Patent Allowed?

Historically, it was widely thought that it was possible to obtain a separate supplementary protection certificates (SPC) for each product covered by a patent.  However, in its judgment in Medeva in 2011, the Court of Justice of the European Union (CJEU) held that where a patent protects a product, only one SPC may be granted per patent.  This judgement caused uncertainty and controversy particularly as to whether multiple SPCs could be granted on a patent which covers multiple products.’ More

26.0”Laboratories, L.P. v. Tolmar, Inc. (Fed. Cir. 2013)””

When does a prior art disclosure of a concentration range of a medicament render obvious the use of a species that falls within that range, when that same use was also known in the prior art?  After all, common sense should dictate that if the same drug were used in the prior art at a different concentration, and the claimed concentration was part of a previously disclosed concentration range, than the claimed use at that concentration should have been obvious.  The Federal Circuit came to such a conclusion last week in Galderma Laboratories, L.P. v. Tolmar, Inc., when it determined that if the claimed concentration falls within a prior-art disclosed range, the burden shifts to the patentee to present evidence of non-obviousness.  However, Judge Newman, in dissent, complained that the majority distorted the burdens of proof and production, and ignored the presumption of validity.  She warned that this opinion forecloses patentability for a large number of improvement patents, which will lead to disincentives to the developments of such improvements.  “The losers,” she concludes “are those afflicted with disease.” More
27.0”Galderma Laboratories Singapore Update] Change of Patent Law from ‘Self-Assessment’ to ‘Positive Grant’ System

The Intellectual Property Office of ””Singapore (IPOS) will implement a new system in their patent law and regulations, effective 11 January 2014. New Singapore national applications, PCT national phase applications and divisional patent applications filed on or after the effective date will be prosecuted under the new ‘Positive Grant System’. Currently IPOS practices a ‘Self-Assessment System’ wherein a patent can be granted although it doesn’t fulfill Singapore’s patentability requirements.’ More

28.0”High Court Turns Down Teva Unit’s Provigil Patent Appeal

The U.S. Supreme Court on Monday declined to take up an appeal by a unit of Teva Pharmaceutical Industries Ltd. of a Federal Circuit finding that its patent for the narcolepsy medicine Provigil is invalid and unenforceable.As is customary, the high court declined Cephalon Inc.’s petition for a writ of certiorari without comment. Generic-drug maker Apotex Inc. brought the underlying suit in 2006, accusing the Israeli drugmaker of conspiring to keep generic versions of Provigil off the market. Apotex claimed a French company called Laboratoire Lafon.
29.0”Novartis Settles Patent Suit Over Organ Transplant Drug

Novartis AG has reached a tentative settlement of its patent infringement suit over Accord Healthcare Inc. USA’s pursuit of government approval for a generic form of the drug Myfortic, which prevents patients from rejecting transplanted organs, according to a joint motion filed Thursday in D.C. federal court.” More

30.0”Auxilium Loses Testim Patent Claims Against Upsher-Smith

Auxilium Pharmaceuticals Inc. lost a patent infringement suit Wednesday alleging Upsher-Smith Laboratories Inc.’s efforts to create a testosterone gel for men infringed 10 patents related to Auxilium’s Testim gel, when a Delaware federal judge ruled Upsher-Smith’s formulation didn’t infringe.Auxilium claimed components in the Upsher-Smith product that help androgens pass through the skin and body membranes were equivalent to components in Testim, but U.S. District Judge Sue L. Robinson disagreed, saying the two were different and granting Upsher-Smith summary judgment.
31.0”Yahoo Seeks Patent on Sending Geographically Appropriate Event Recommendations to a Mobile Device

American multinational corporation Yahoo! Inc. is a major developer of Internet services that are used worldwide. Every month, hundreds of millions of users access Yahoo! website and services, making it one of the most popularly visited American websites on the Internet. Recently, the company announced a new online picture printing program called Flickr Photo Books that would integrate photos stored on Flickr. Yahoo!’s fiscal strength is evidenced with the announcement that the company is increasing a share buyback program by $5 billion, a decision that’s resulted in rising stock prices for Yahoo! in recent days.” More

32.0”House Passes H.R. 3309 (Innovation Act)

The House of Representatives earlier today passed H.R. 3309, the Innovation Act, by a 325 – 91 vote.  Before voting on the bill, the House spent several hours debating and voting on a number of amendments.  Other than a technical amendment introduced by Rep. Goodlatte (R-VA), the only other amendment approved by the House was introduced by Rep. Rohrabacher (R-CA), preserving 35 U.S.C. ‘ 145, which allows a patent applicant to sue in district court to obtain a patent after a USPTO rejection.  We will provide more detailed coverage of the House vote and the Innovation Act later today.More

33.0”Philips Faces Infringement Suit Over LED Lighting

Ilumisys Inc., the maker of LED systems designed to replace fluorescent tube lights, on Friday alleged Philips Electronics America Corp. infringed on its patents for the lights in a suit in Michigan federal court.Ilumisys, which does business as Toggled, said Philips asked for samples of its lights in February 2010 and that the patent-holder offered it a licensing deal that Philips rejected, according to the suit.’ More

34.0’Roche Asks Fed. Circ. To Revive Boniva Dosage Patents

Hoffmann-La Roche Inc. pushed a Federal Circuit panel on Friday to resurrect two of its patents covering the osteoporosis drug Boniva despite protests from several generic-drug makers, maintaining there was nothing in the record to support the lower court’s obviousness finding.Although the lower court determined that several prior art references and studies made Roche’s once-monthly Boniva dosage obvious to those skilled the art, the company told the three-judge panel that there was no proof that the 150 milligram dose would be well tolerated by patients.According to Roche’s counsel Mark E. Waddell, earlier studies showed that some lower doses had higher gastrointestinal side effects and study dropout rates, which undermines the New Jersey federal court’s finding that there was a reasonable expectation of success for the 150 milligram dosage system.” More

35.0”Orchid, MPI Dodge Enzo Biochem’s Patent, Contract Claims’

A New York federal judge on Friday tossed Enzo Biochem Inc.’s breach of contract, unfair competition and patent claims against two biotechnology companies over their use of its patented technology for labeling nucleotides, the basic building blocks of DNA, after finding Enzo could not back up its accusations.U.S. District Judge Richard Sullivan said there was no proof that Orchid Biosciences Inc. and Molecular Probes Inc. ‘ which Enzo hit with separate suits along with several other companies over their use of its products ‘ were out to harm Enzo by interfering with its contractual relationship with a distributor or that they were using illegal methods to cut into Enzo’s customer base, granting summary judgment to both defendants. The suits’ allegations “have nothing whatsoever to do with either defendant misappropriating Enzo’s goodwill with consumers or passing off MPI or Orchid goods under Enzo’s name,” Judge Sullivan wrote.” More

36.0 University of Pittsburgh v. Cellerix (PTAB 2013)

The Patent Trial and Appeals Board (PTAB), a creation of the Leahy-Smith America Invents Act that replaced the Board of Patent Appeals and Interferences (BPAI) overruled the Reexamination Unit’s decision that the claims of U.S. Patent No. 6,777,231 were invalid for failing to satisfy the written description and enablement requirements of 35 U.S.C. ‘ 112(a) in University of Pittsburgh v. Cellerix (the Third Party Requestor being succeeded in interest by TiGenix SAU) (Appeal 2013-008103; Reexamination Control 95/001,592).  All was not well for the University Patent Owner, however, because the Board also reversed the Reexamination Unit’s refusal to consider whether the claims of the ‘231 patent were inherently anticipated by three prior art references, remanding the reexamination under 37 C.F.R. 41.77(b).’More