Category Archives: Priority

FC panel affirms DC finding that Amgen’s Otezla® composition patents are not invalid, but also that method of treatment claims are invalid, for obviousness

Posted on April 21, 2023 by Patrick J. Halloran, Ph.D., J.D.

Amgen Inc. v. Sandoz Inc. et al. Docket No. 2020-1147, 1149-51 (https://cafc.uscourts.gov/opinions-orders/22-1147.OPINION.4-19-2023_2113208.pdf) LOURIE, CUNNINGHAM, STARK April 19, 2023 Brief Summary:   DC finding that two of Amgen’s Otezla® composition patents not invalid for obviousness affirmed.  DC finding that another of … Continue reading →

Posted in Enablement, Generics / ANDA, Inherency, Method claims, Obviousness, Obviousness (Secondary Considerations), Obviousness-Teaching Away, Priority, Written description | Leave a comment

Board finding of no written description of genus claims in priority applications and anticipation affirmed

Posted on March 8, 2023 by Patrick J. Halloran, Ph.D., J.D.

Regents of the University of Minnesota v. Gilead Sciences, Inc. Docket No. 2021-2168 (IPR 2017-01712) (https://cafc.uscourts.gov/opinions-orders/21-2168.OPINION.3-6-2023_2090143.pdf) LOURIE, DYK, STOLL March 6, 2023 Brief Summary:   Board IPR FWD finding UM’s genus claims lack a sufficient written description in priority applications … Continue reading →

Posted in Anticipation (35 USC 102), Inter Parties Review (IPR), IPR, Markush, Priority, Written description | Leave a comment

DC decision of infringement and no invalidity of Pharmacyclic’s BTK inhibitor-related patents affirmed

Posted on November 29, 2022 by Patrick J. Halloran, Ph.D., J.D.

Pharmacyclics LLC, Jannsen Biotech, Inc. v. Alvogen, Inc., Natco Pharma Limited Docket No. 2021-2270 (https://cafc.uscourts.gov/opinions-orders/21-2270.OPINION.11-15-2022_2033497.pdf) (Non-Precedential) CHEN, BRYSON, HUGHES November 15, 2022 Brief Summary:   DC decisions that Pharmacyclic’s patents were infringed and not invalid for lack of written description, … Continue reading →

Posted in Anticipation (35 USC 102), Double Patenting, Enablement, Generics / ANDA, Incorporation by Reference, Infringement, Method claims, Obviousness, Obviousness (Secondary Considerations), Priority, Public Accessibility, Written description | Leave a comment

Board IPR decisions finding Sanofi’s injector claims obvious due to lack of written description in priority document affirmed

Posted on January 24, 2022 by Patrick J. Halloran, Ph.D., J.D.

Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc. (USPTO as Intervenor) Docket No. 2020-2066, -2068-9 (IPRs 2018-01679-80, -82) (https://cafc.uscourts.gov/opinions-orders/20-2066.OPINION.12-29-2021_1886477.pdf) (Non-Precedential) DYK, CLEVENGER, TARANTO December 29, 2021 Brief Summary:  Board IPR decision finding Sanofi’s patents obvious because priority application does not provide … Continue reading →

Posted in Inter Parties Review (IPR), IPR, Obviousness, Priority, Written description | Leave a comment

PTAB denies institution of IPR against PureCircle’s steviol process claims

Posted on October 25, 2019 by Patrick J. Halloran, Ph.D., J.D.

Sweegen, Inv. v. PureCircle USA Inc., et al. IPR2019-01017 (US 9,243,273B2) October 24, 2019 Decision not to institute IPR Brief Summary: Petition for IPR denied as PTAB determined Sweegen did not present a reasonable likelihood of prevailing on obviousness or … Continue reading →

Posted in Anticipation (35 USC 102), Inter Parties Review (IPR), IPR, Obviousness, Priority, Uncategorized | Leave a comment

DC correctly denied preliminary injunction since Propel showed evidence of anticipation by parent patent application

Posted on September 30, 2019 by Patrick J. Halloran, Ph.D., J.D.

OrthoAccel Techs., Inc. v. Propel Orthodontics, LLC, et al. Docket No. 2018-1534 (Non-precedential) PROST, REYNA, WALLACH September 23, 2019 Brief Summary: DC denial of a preliminary injunction affirmed since Propel presented sufficient evidence to shift the burden of persuasion to … Continue reading →

Posted in Anticipation (35 USC 102), Injunction, Priority, Uncategorized, Written description | Leave a comment

Board IPR anticipation and obviousness decisions affirmed; unconstitutionality of IPR arguments rejected (as in Celgene)

Posted on August 19, 2019 by Patrick J. Halloran, Ph.D., J.D.

Enzo Life Sciences, Inc. v. Becton, Dickinson and Co. (Holozyme) Docket No. 2018-1232, -1233 (IPR2016-00820, -00822) LOURIE, O’MALLEY, CHEN August 16, 2019 (Non-Precedential) Brief Summary: Board decisions of invalidity of Enzo’s claims for anticipation and obviousness affirmed; arguments that retroactive … Continue reading →

Posted in Anticipation (35 USC 102), Claim Construction, Inter Parties Review (IPR), IPR, Obviousness, Obviousness-Teaching Away, Priority, Uncategorized, Written description | Leave a comment

Concert Pharm., Inc. v. Incyte Corp.

Posted on January 9, 2019 by Patrick J. Halloran, Ph.D., J.D.

Post-Grant Review PGR2017-00034 (U.S. Pat. No. 9,662,335 B2) Decision not to institute PGR January 11, 2019 Brief summary: Concert’s Petition to institute PGR of Incyte’s US 9,662,335 B2 regarding deuterated ruxolitinib was denied. Summary: Concert filed a Petition to institute … Continue reading →

Posted in Anticipation (35 USC 102), Enablement, Post-grant review, Priority, Written description | Leave a comment

Natural Alternatives Int., Inc. v. USPTO

Posted on October 2, 2018 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2017-1962 PROST, MOORE, REYNA October 1, 2018 Brief summary: Board affirmance of examiners rejections affirmed as NAI was not entitled to an earlier priority date from a chain of applications because an intervening CIP disclaimed priority to the … Continue reading →

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D Three Enterprises, LLC v. Sunmodo Corp. / Rillito River Solar LLC (EcoFasten)

Posted on May 23, 2018 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2017-1909, -1910 REYNA, CLEVENGER, WALLACH May 21, 2018 Brief summary: DC decision of invalidity for lack of written description (WD) affirmed because, e.g., “adequate [WD] does not ask what is permissible, rather, it asks what is disclosed” (Ariad, … Continue reading →

Posted in Priority, Written description | Leave a comment