Canine Genetic Testing Patent Dispute Settled

On December 13, 2013, Genetic Veterinary Sciences, Inc. (d/b/a Paw Print Genetics) filed a declaratory judgment action against VetGen, LLC, in the United States District Court for the Eastern District of Washington (Spokane). The lawsuit sought a declaration that Paw Print Genetics was not infringing various claims of patents owned by VetGen. The complaint specifically sought a declaration of non-infringement with respect to U.S. Patent Nos. 6,040,143, 6,074,832, 6,767,707, 6,780,583, and 6,410,237. Each of these patents are titled DNA encoding canine von Willebrand factor and methods of use. In the alternative, Paw Print Genetics also sought a declaration that the claims of the patents are invalid. Both Paw Print Genetics and VetGen offer inherited disease testing to identify carriers and affected dogs for a variety of different canine genetic conditions.

In both dogs and humans, von Willebrand’s disease is a bleeding disorder of variable severity that results from a quantitative or qualitative defect in von Willebrand factor. This clotting factor has two known functions, stabilization of Factor VIII (hemophilic factor A) in the blood, and aiding the adhesion of platelets to the subendothelium, which allows them to provide hemostasis more effectively. If the factor is missing or defective, the patient, whether human or dog, may bleed severely. The disease is the most common hereditary bleeding disorder in both species, and is genetically and clinically heterogenous.

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USPTO Issues Design Patent No. 700,000

The Department of Commerce recently had a ceremony at Langdon Education Campus in Washington, DC, commemorating the issuance of the 700,000th design patent (see main image to the left). The design patent, titled Hand-held learning apparatus, was issued to LeapFrog Enterprises, Inc. (NYSE: LF) on February 25, 2014, but the celebration ceremony was not held until March 26, 2014.

“Protecting and promoting our idea-driven economy is essential to keeping America open for business,” said U.S. Secretary of Commerce Penny Pritzker. “The USPTO plays a major role in serving our nation’s innovators by granting them the intellectual property rights they need to secure investment capital, build companies and bring their products and services to the global marketplace.”

The ceremony also included the launch of a new Intellectual Property (IP) Patch developed as a joint project between the USPTO, the Girl Scout Council of the Nation’s Capital, and the Intellectual Property Owners (IPO) Education Foundation.

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Three Things from SCOTUS Oral Argument in Alice v. CLS Bank

On Monday, March 31, 2014, the United States Supreme Court held oral arguments in the much-anticipated software battle between patentee Alice Corporation, the petitioner, and CLS Bank, the respondent who was victorious below thanks to an equally divided Federal Circuit.

Oral arguments are but one piece of the overall puzzle, so we can easily make too much of their importance, but they are the only way the concerned public can see behind the curtain at the Supreme Court. By many accounts, oral arguments are the least significant piece of the puzzle with many, if not most, Justices relying most heavily on the briefs. Indeed, during oral argument, Justice Breyer specifically stated that he had read each of the amici briefs, which seems a near herculean task given the number of other cases the Supreme Court considers and the sheer volume of briefs filed in this case. 

Even with oral arguments being less important than they may seem, there will be all kinds of attempts to predict what the likely outcome will be based on this sneak peek. Of course, it is impossible to know how a Justice will decide based on the questions asked during oral argument. Case in point — did anyone think the Chief Justice would rule in favor of Obamacare? But for now, the oral argument transcript is all we have to rely on. So with that in mind, here are three things that piqued my interest during the oral arguments.

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Actavis Announces Daytrana® Patent Challenge Settlement

On March 19, 2014, Actavis plc (NYSE: ACT) announced that it entered into an agreement with Noven Pharmaceuticals, Inc. to settle all outstanding patent litigation related to Actavis’ generic version of Daytrana® (Methylphenidate Transdermal System).  Daytrana® is a CNS stimulant indicated for the treatment of Attention Deficit Hyperactivity Disorder. For the 12 months ending December 31, 2013, Daytrana® had total U.S. sales of approximately $98 million, according to IMS Health data.

The ultimate launch of Actavis’ product is, however, contingent upon Actavis receiving final approval from the U.S. Food and Drug Administration on its Abbreviated New Drug Application (ANDA) for generic Daytrana®.

This patent dispute in fact arose out of the filing of the ANDA by Actavis. An ANDA applicant must make one of four certifications regarding each patent that applies to the drug for which approval is being sought: (I) no such patent information has been submitted to the FDA; (II) the patent has expired; (III) the patent is set to expire on a certain date; or (IV) the patent is invalid or will not be infringed by the drug covered in the ANDA.

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A Design Patent Strategy for Portfolio Development

Once upon a time, one of the ways you could separate the unsavory underbelly of the patent industry from the legitimate operators was to look at who was directing clients to get design patents. Design patents have always been easy to obtain…indeed, far easier to obtain than a utility patent. But design patent rights are exceptionally weak. Nevertheless, over the past decade, design patents have continued to grow in numbers, and have proved to be an effective part of patent strategy, in some cases. If you have not considered advising clients to seek design patents, you really should consider the benefits.

Design patents applied for in green, with design patents issued in blue.

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