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By Donald Zuhn -- Earlier this month, in Chen v. Jung, District Judge Manuel L. Real of the U.S. District Court for the Central District of California issued an order denying a motion for summary judgment filed by Defendants, finding that genuine issues of material fact existed with respect to Plaintiff's contribution to the conception of the claimed inventions of U.S. Patent Nos. 8,445,507, 8,802,689, and 9,388,159. Plaintiff Degui Chen, Ph.D., had filed suit against Michael Jung, Ph.D., and Charles L. Sawyers, M.D., seeking correction of inventorship of the '507, '689, and '159 patents, which are directed to pharmaceutical compositions...
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Software Claims Survive Section 101 Challenge and Are Found to Be Directed to Patent-Eligible Subject Matter By Joseph Herndon -- In the U.S. Patent and Trademark Office, the Patent Trial and Appeal Board (PTAB) recently designated its decision in Ex Parte Smith as an informative decision for its application of the revised guidance on the application of 35 U.S.C. § 101. (Ex parte Eileen C. Smith, Anthony Montesano, Edward T. Tilly, Mark A. Esposito, Stuart J. Kipnes, and Anthony J. Carone, Appeal 2018-000064, Technology Center 3600). Below, we analyze the decision, which is favorable for applicants, to illustrate that even...
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March 26, 2019 - "The Supreme Court Ruling in Helsinn v. Teva: Impact on Prior Art and Patent Eligibility for University Innovations" (Technology Transfer Tactics) -1:00 pm to 2:00 pm (ET) March 27, 2019 - "Whither Oil States? The Future of Patents as Property Rights" (John Marshall Law School Center for Intellectual Property, Information & Privacy Law) - 1:15 pm to 2:45 pm, Chicago, IL March 28, 2019 - "Developing a Life Sciences Patent Portfolio -- Prosecution, Orange Book /Purple Book Listing, IP Acquisitions, Licensing, Collaborations, and More" (Strafford) - 1:00 to 2:30 pm (EDT) April 29-30, 2019 - Paragraph...
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McDonnell Boehnen Hulbert & Berghoff LLP and Patent Docs will be hosting two onsite CLE programs on "Recent Developments in Biopharma Patent Law" from 9:30 am to 1:30 pm on April 23, 2019 in San Diego, CA (Hyatt Regency La Jolla at Aventine) and on April 24, 2019 in Burlingame, CA (Hyatt Regency San Francisco Airport). MBHB attorneys and Patent Docs authors Kevin Noonan and Donald Zuhn, and MBHB attorneys Josh Rich, Lisa Hillman, Sarah Fendrick, John Conour, Nate Chongsiriwatana, and Nicole Grimm will provide presentations on the following topics: • Updates on Subject Matter Eligibility Analysis • Patenting Repurposed...
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By Kevin E. Noonan -- More than two years ago, on January 17, 2017, the U.S. Food and Drug Administration released its Guidance for Industry relating to the biosimilar application process set forth in the Biologic Price Competition and Innovation Act of 2009 (BCPCIA). This Guidance, entitled Nonproprietary Naming of Biological Products, extended to both reference biologic drug products and their biosimilar counterparts. The basis for this naming regime, and its extension to both types of biologic drugs, reflected the agency's rationale for providing a naming convention in the first place and was based on FDA's dual responsibilities to protect...
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By Kevin E. Noonan -- The portion of the eukaryotic world inhabited by plants exhibits a genetic complexity not shared by members of the animal world (see, for example, "Rose Genome Reveals Its Exquisite Complexities"). The strawberry (Fragaria × ananassa) genome, recently explicated in a paper published last month in Nature Genetics, provides yet another example of this characteristic. The paper, entitled "Origin and evolution of the octoploid strawberry genome," which was authored* by scientists from several academic institutions and genomics companies, provides a complete genomic sequence for the allo-octoploid ("2n = 8X = 56" chromosomes) strtawberry genome, which is appreciated as...
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By Donald Zuhn -- Last week, in Natural Alternatives International, Inc. v. Creative Compounds, LLC, the Federal Circuit reversed and remanded a decision by the U.S. District Court for the Southern District of California granting a motion for judgment on the pleadings filed by Creative Compounds, LLC that the asserted claims of U.S. Patent Nos. 5,965,596, 7,825,084, 7,504,376, 8,993,610, 8,470,865, and RE45,947 are not patent eligible. In reversing the District Court, the Federal Circuit found that Creative Compounds had failed to demonstrate that the asserted claims were not patent eligible in view of Natural Alternatives' proposed claim constructions. The patents...
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Claims for Dynamically Rating Internet Content Deemed Patent-Ineligible By James Korenchan -- In a suit by Plaintiff Symantec Corp. ("Symantec") against Defendant Zscaler, Inc. ("Zscaler"), Symantec alleged that Zscaler's cloud-based security products infringe seven of Symantec's patents. Zscaler moved to dismiss infringement claims for four of the patents, U.S. Patent Nos. 6,285,658 (the '658 patent), 7,587,488 (the '488 patent), 8,316,446 (the '446 patent), and 8,316,429 (the '429 patent), on grounds that the claims of the patents are directed to patent-ineligible subject matter under 35 U.S.C. § 101. Earlier this month, Judge Jon S. Tigar of the U.S. District Court for...
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By Steve Kennedy* and Anthony D. Sabatelli** As reviewed previously, antibody-drug conjugates (ADCs) are a highly promising class of antitumor drugs that represent a growing proportion of cancer treatments in the development pipeline (see "Antibody Drug Conjugates: The Patent Landscape for a New Class of Cancer Treatment"). By combining the specificity of monoclonal antibodies targeted to tumor markers with the strong antitumor potential of potent small-molecule drug payloads, ADCs have the potential to aggressively treat many cancers with fewer side effects than traditional therapies. A key component in their design is the linker that joins the antibody and the payload....
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March 19, 2019 - "The Evolving Provenance of Obviousness-type Double Patenting" (McDonnell Boehnen Hulbert & Berghoff LLP) - 10:00 am to 11:15 am (CT) March 19, 2019 - "Japanese Patent Practice-Specialty Areas" (Intellectual Property Law Association of Chicago (IPLAC) International Patent Committee) - 11:45 am to 1:00 pm (CT), Chicago, IL March 20, 2019 - "Drafting Software Patents to Survive Section 101 and AIA Challenges -- Anticipating and Minimizing the Risk of 101, 103 Rejections, Recent Court Guidance" (Strafford) - 1:00 to 2:30 pm (EDT) March 21, 2019 - "Key Issues Shaping the US IP Landscape" (Federal Circuit Bar Association)...
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