SoCal IP Law Group

The SoCal IP Law Blog

Monthly Archives: June 2013

SoCal IP Institute :: July 1, 2013 :: The Line Between Patent and Antitrust &Undue Experimentation Under 35 U.S.C. 112

Our weekly SoCal IP Institute meeting on Monday, July 1, 2013 will be a discussion of a recent Supreme Court case regarding the line between patent and antitrust and a Federal Circuit decision on enablement. Brief synopses of the cases appear below.

FTC v. Actavis, Inc., Case No. 12-416 (U.S.  June 17, 2013) (available here).  In this case, the Supreme Court held that agreements amongst competitors involving one of the party’s patents do not a priori avoid antitrust liability because of the agreement pertained to a patent owned by one of the parties.  In this case, Solvay Pharmaceuticals obtained a patent for a product called AndroGel.  Two parties filed ANDA notices related to AndroGel and Solvay sued.  The parties subsequently settled with an agreement by the two parties not to enter the market in exchange for payments from Solvay.  The FTC sued alleging that the agreement was a violation of Section 5 of the FTC Act.  The district and appeals court agreed that the agreement did not raise antitrust concerns because any anticompetitive effects of a settlement fall within the scope of the patent’s exclusionary potential.  The FTC appealed and the Supreme Court held that the lower courts must at least consider and counterbalance the patent’s exclusion with any anticompetitive behavior applying the so-called “rule of reason” approach.  The Supreme Court did not go so far as to call such “reverse payment” agreements anticompetitive, but indicated that such situations may pose a problem under antitrust laws.

Wyeth v. Abbot Labs, (Fed. Cir. 2012-1223, 1224 (June 26, 2013) (available here).  Wyeth and Cordis appealed from a district court decision granting summary judgment that claims of two patents are invalid for non-enablement.  The Federal Circuit affirmed.  Specifically, the patents are related to the use of rapamycin for the treatment and prevention of restenosis.  The claims recite a method of treating “restenosis in a mammal . . . which comprises administering an antirestnosis effective amount of rapamycin to said mammal.  The repamycin refers to a class of compounds that were known at the filing date of the relevant applications.  The primary question on appeal was whether undue experimentation was required to use the invention, specifically to determine which repamycin, construed as “structural analogs to sirolimus that exhibit immunosuppressive and antirestenotic effects.”  The district court found that the claims did require undue experiementation,  thus rendering the patent non-enabled.

Specifically, the Federal Circuit found that even accepting the plaintiff’s argument that the molecular weight of compounds would have directed one of skill in the art to a subset of the potentially millions of viable compounds, that there remained tens of thousands of potential compounds that might be viable and would require screening by one seeking to practice the invention. Further, the court pointed out that appellant’s own witnesses testified that even minor alterations to the sirolimus molecule could impact its immunosuppressive and antirestenotic properties.  Because the “rapamycin” term was construed based upon its functional properties, not as any specific compound or group of compounds, the Federal Circuit agreed with the district court, finding that the requirement to screen potentially thousands of potential compounds in order to practice the invention constituted “undue experimentation” making the patent non-enabling.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 1, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

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SoCal IP Institute :: June 24, 2013 :: Patentable subject matter and Issue preclusion

Our weekly SoCal IP Institute meeting on Monday, June 24, 2013 will be a discussion of two Federal Circuit decisions. Brief synopses of the cases appear below.

Ultramercial, Inc. v. Hulu, (Fed. Cir. June 21, 2013) (available here).

The Federal Circuit reversed and remanded the district court’s holding that the subject matter of plaintiff’s patent was not a “process” within the language and meaning of 35 U.S.C. section 101. Plaintiff’s patent involved a method for distributing copyrighted products over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement, and the advertiser pays for the copyrighted content.

Levi Strauss & Co. v. Abercrombie & Fitch Trading Co. (Fed. Cir. June 18, 2013) (available here).

Defendant had trademark registrations for a stitching design for use on a wide range of clothing. Plaintiff had instituted opposition and cancellation proceedings before the PTO. The PTO dismissed plaintiff’s challenges on the ground that a district court litigation between the parties barred the challenges in the PTO based on issue preclusion. The Federal Circuit reversed and remanded the PTO’s holding.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 24, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: June 17, 2013 :: Gene Patent Eligibility and Federal Circuit Appeals Jurisdiction

Our weekly SoCal IP Institute meeting on Monday, June 17, 2013 will be a discussion of the recent Myriad case and a Federal Circuit decision on the court’s jurisdictional scope on appeal. Brief synopses of the cases appear below.

Assoc. for Molecular Pathology v. Myriad Genetics, Inc., Case No. 12-398 (U.S.  June 13, 2013) (available here).  In this case, the Supreme Court determined that patent claims directed to genes that occur naturally are not patentable subject matter under 35 U.S.C. 101.  However, the Court was careful to point out that, in this case cDNA was not a product of nature and, thus is patent eligible.

Robert Bosch, LLC v. Pylon Mfg. Crop. (Fed. Cir. 2011-1363, 1364 June 14, 2013) (available here).  The Federal Circuit took this case sua sponte and en banc to answer two questions. First, does 28 U.S.C. § 1292(c)(2) confer juris- diction on the Federal Circuit to entertain appeals from patent infringement liability determinations when a trial on damages has not yet occurred? Second, does 28 U.S.C. § 1292(c)(2) confer jurisdiction on the Federal Circuit to entertain appeals from patent infringement liability determinations when willfulness issues are outstanding and remain undecided? The court answered both questions in the affirmative and returned the case to the panel for disposition on the merits.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 17, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: June 10, 2013 :: President Obama’s Executive Initiatives and

Our weekly SoCal IP Institute meeting on Monday, June 10, 2013 will be a discussion of President Obama’s recent executive actions related to high-tech patent issues.

For Monday’s discussion, we will be discussing, “Fact Sheet: White House Task Force on High-Tech Patent Issues.” In addition, we will be discussing Judge Rader’s editorial in the New York Times, titled “Make Patent Trolls Pay in Court.”

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 10, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.