IP Newsflash

Reuters has published “Navigating the Parallel Path of Patent Litigation Alongside the Inflation Reduction Act,” an article by Akin partners Michael P. Kahn and Craig B. Bleifer and counsel Caitlin E. Olwell. The lawyers hail from the firm’s market-leading intellectual property (IP) and health care & life sciences groups.

The Federal Circuit recently held certain method of treatment claims patent eligible under step one of Alice, reversing a district court’s judgment on the pleadings. In that same case, the Federal Circuit upheld the district court’s obviousness and obviousness-type double patenting determinations invalidating the claims of two other patents because the claimed treatments fell within a prior art dosage range.

Chief Judge Stark granted a defendant’s Rule 12(c) motion for judgment on the pleadings based on non-infringement, holding that plaintiff’s patent term extension (PTE) did not extend to the accused product because the PTE was based on approval of one active ingredient while the accused product was a metabolite of that ingredient.

On January 15, 2020, the United States and China signed a Phase 1 trade agreement (the “Agreement”). The Agreement addresses a broad range of economic issues including intellectual property, agriculture, financial markets, currency and technology. Chapter 1 of the Agreement relates to intellectual property and recognizes that, as China shifts from a major intellectual property consumer to a major intellectual property producer, it must develop a comprehensive intellectual property system. Chapter 1 of the Agreement largely aims to bring Chinese intellectual property laws more in line with those of the United States and includes some provisions that could have significant effects on the pharmaceutical industry in China.

The Federal Circuit recently affirmed a district court’s determination, holding a group of patents invalid for indefiniteness.

The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board finding nonobvious the claims of U.S. Patent No. 7,772,209 (the “’209 Patent”), which are directed to a method of treating cancer.

In Amerigen Pharmaceuticals Limited v. UCB Pharma GmbH, generic drug manufacturer Amerigen appealed a decision of the Patent Trial & Appeal Board finding UCB’s patent to certain chemical derivatives of diphenylpropylamines not invalid. The court ultimately affirmed the Board’s decision. But first, the court held that Amerigen had standing to pursue the appeal.

The Court of Appeals for the Federal Circuit issued two opinions on December 7 that address two unsettled questions relating to obviousness-type double patenting (OTDP). These issues are of particular interest to pharmaceutical and biotech companies.