Patent Law Practice Center

Centocor v. Abbott Labs: When Is A Biotech Invention Complete And Ready For Filing?

The following post was written by Gerald M. Murphy, Partner at Birch, Stewart, Kolasch & Birch, LLP and Practice Center Contributor.

On February 23, 2011, the Court of Appeals for the Federal Circuit in Centocor v. Abbott Labs set aside a $1.7 billion jury verdict in favor of the patentee (Centocor) and held the patent claims at issue were invalid for lack of written description.  This decision reflects a trend of the Federal Circuit in recent years to invalidate patents for lack of written description and offers little guidance as to what is necessary to actually comply with the written description requirements. This case dealt with a somewhat “unpredictable” biotech invention, where there was not an actual reduction to practice of the claimed invention.  In the pharmaceutical fields, it is very common to have method claims directed to treatment of humans and it is very unusual to have had an actual reduction to practice of the method prior to filing the patent application.  However, in this case, the claims were not directed to a method of use, but rather, a new product (antibody).  Based on this and other cases, it appears that the trend of finding lack of written description may become more common in so-called “predictable technologies.” Read the rest of this entry »

Xilinx Attack On Intellectual Ventures Patent Among Reexamination Requests Filed Week OF 2/14/11

Here is the latest installment of Reexamination Requests from our friends at Westerman, Hattori, Daniels & Adrian….

Intellectual Ventures shook up the patent world in December when it filed three separate infringement suits against a series of large electronics companies.  In one of the cases, Intellectual Ventures accused Altera, Microsemi and Lattice Semiconductor of infringing four patents programmable logic devices.  On Tuesday of last week, Intellectual Ventures filed an amended complaint to add Xilinx as a defendant.  Well, Xilinx is wasting no time, and on Friday it asked the Patent Office to reexamine one of the five patents-in-suit, U.S. Patent No. 6,272,646.  Requests for reexamination of the other four patents may come soon (see inter partes Request No. (8)).

The other big news, which we reported in two posts last week, were requests by Google for reexamination of five of the seven Oraclepatents-in-suit in the their case in California.  (See inter partes Request No. (6) and ex parte Request Nos. (4) to (7)). Read the rest of this entry »

New Patent Bar is Coming: Get Prepared At Upcoming PLI Briefing

The Patent Office recently announced that there will be a major update of the material tested on the Patent Bar Exam in April. PLI has been preparing for this change for years already. In an one hour briefing scheduled for February 25, 2011, 1:00 pm – 2:00 pm  (E.S.T.), John M. White, PLI’s Director of Patent Professional Development and chief lecturer of PLI’s Patent Bar Review, will share the critical information and strategies for taking the Patent Bar Exam.

Topics to be addressed include:

• The new materials that will be tested on the Exam
• PLI’s preparations to make sure that you’re up to speed with everything tested on the Exam
• Strategies for taking the Exam into the foreseeable future

Mark your calendar and be sure to register for this free briefing!

**Please Note: CLE credit is not available for this program.

Facebook Challenges To Three “Human Relationships” Patents, Among Reexamination Requests Filed Week Of FEBRUARY 7th

Here is the latest installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

This past Monday having been Valentine’s Day, we couldn’t help noticing the requests (see inter partes Request Nos. (1) to (3)) filed last week by Facebook against three patents owned by Mekiki Creates for computer systems for “registering human relationships.”  Facebook and Mekiki are currently in a relationship in an infringement suit in the Northern District of California.  Also look at inter partes Request No. (6) for a gem cutting apparatus patent.

The following inter partes requests were filed:

(1)         95/001,537 (electronically filed) – U.S. Patent No. 7,496,603 entitled HUMAN RELATIONSHIPS REGISTERING SYSTEM, METHOD AND DEVICE FOR REGISTERING HUMAN RELATIONSHIPS, PROGRAM FOR REGISTERING HUMAN RELATIONSHIPS, AND MEDIUM STORING HUMAN RELATIONSHIPS REGISTERING PROGRAM AND READABLE BY COMPUTER and owned by Mekiki Creates. Filed February 7, 2011, byFacebook, Inc.  The ‘603 patent is currently the subject of a litigation styled Mekiki Co., Ltd. And Mekiki Creates Co., Ltd v. Facebook, Inc. (No 10-cv-2721-LHK (USDC- No. Dist. Of Cal)). Read the rest of this entry »

Institute Live Blog: Hidden Risks of Patent License Agreements

Next up is Peter Brown of Baker Hostetler discussing critical pitfalls in Intellectual Property Licenses.

Sublicense v. Valid Exercise of Rights Under License Agreement

• – Licensees may be in violation of the license agreement if they enter into agreements with third parties that effectively equal a sublicense
• – Courts will look at the nature of the relationship between the parties to determine whether a sublicense exists (E.I. du Pont de Nemours and Co. v. Shell Oil Co.,498 A.2d 1108, Court held arrangement equals sublicense).
• – Implied Licenses – parties should explicitly state all of the rights that are included in a license or state those that are not included in the license or disclaim any implied licenses.  Certain rights may be implied by the circumstances, even though not explicitly stated where without the implied right, the license would not benefit the licensee. (Met-Coil Systems Corp v. Korners, Unltd.803 F.2d 684 , Court held that unrestricted sales of a machine useful only in performing the claimed process & producing the claimed product plainly indicates that the grant of a license should be inferred) Read the rest of this entry »