Obviousness in prodrugs — Daiichi Sankyo Co. v. Mylan

12.06.10 Posted in Federal Circuit Opinions by

Proof of obviousness based on structural similarity requires clear and convincing evidence that a medicinal chemist of ordinary skill would have been motivated to select and then to modify a prior art compound (e.g., a lead compound) to arrive at a claimed compound with a reasonable expectation that the new compound would have similar or improved properties compared with the old.


Donepezil: Teva has standing in declaratory judgement action that it doesn’t infringe listed patents

10.18.10 Posted in Federal Circuit Opinions by

Teva Pharms. USA Inc. v. Eisai Co., Ltd., No. 2009-1593 (Fed. Cir. 10/6/2010). Ranbaxy was first-filer (pre-MMA) for donepezil of an ANDA with a “paragraph IV” certification, and Teva was a subsequent filer with a paragraph IV certification. Teva obtained tentative approval for its ANDA, but was prevented from marketing by Ranbaxy’s first-filing. Teva sued […]


Adams Respiratory Therapeutics, Inc. v. Perrigo Co.

08.26.10 Posted in Federal Circuit Opinions by

No. 2010-1246 (Fed. Cir. 8/5/2010) (Linn, Moore, Friedman, opinion by Moore).This case highlights several important issues in an ANDA litigation. Background Adams owns the ‘252 patent for controlled release guaifenesin. Adams markets Mucinex® which is the preferred embodiment of the ‘252 patent. Slip op. at 3. Perrigo filed an ANDA seeking to market 600 mg […]


Obviousness upheld: Purdue Pharma Products L.P. v. Par Pharmaceutical, Inc.

06.05.10 Posted in Federal Circuit Opinions by

No. 2009-1553 (Fed. Cir. 6/3/2010) (non precedential). Par filed an ANDA for once daily tramadol, with PIV cert’s against two patents.  Purdue sued, and Par counterclaimed that the patents were invalid under 35 U.S.C. § 112 for lack of enablement and written description, invalid under § 103 for obviousness, and unenforceable due to inequitable conduct. […]


Inequitable Conduct: Leviton Manufacturing Co., Inc. v. Universal Security Instruments, Inc.

06.05.10 Posted in Federal Circuit Opinions by

No. 2009-1421 (Fed. Cir. 5/28/2010). Leviton filed several patent applications (that matured to granted patents) in 1999 and 2003 (“Germain application”) with nearly identical and in some cases identical claims. The 1999 and Germain application families were unrelated by priority and had no overlap of inventorship.  Leviton failed to disclose the 1999 application during prosecution […]


Vizio, Inc. v. ITC

06.01.10 Posted in Federal Circuit Opinions by

No. 2009-1386 (Fed. Cir. 5/26/2010).  Funai owns the ‘974 patent that improves “channel latency,” a delay in digital TV decoders while data is received. Funai brought an action at the ITC alleging that defendants imported infringing TV’s.  The ITC concluded that certain claims of the ‘974 patent were valid and enforceable, and infringed by defendants. […]


Aspex Eyewear Inc. v. Clariti Eyewear, Inc.

05.26.10 Posted in Federal Circuit Opinions by

In Aspex Eyewear Inc. v. Clariti Eyewear, Inc., No. 2009-1147 (Fed. Cir. 5/24/2010), Aspex sent Clariti several letters in 2003 alleging infringement of Aspex patents pertaining to eyewear. The last letter from Clariti was sent in June, 2003. Aspex then had no further contact with Clariti until August, 2006, when Aspex again renewed its allegations […]


Orion IP, LLC. v. Hyundai Motor Co.

05.23.10 Posted in Federal Circuit Opinions by

U.S. Patent No. 5,367,627 is drawn to a computerized method for selecting parts, for example in an auto shop for selecting parts for repairs.  Orion IP, LLC v. Hyundai Motor Co., No. 2009-1130 (Fed. Cir. 5/17/2010). The patentee alleged that Hyundai and other plaintiffs infringed the claimed method in their online sales systems. A jury […]


Standing to sue: Alfred E. Mann Foundation for Scientific Research v. Cochlear Corp.

05.23.10 Posted in Federal Circuit Opinions by

In Alfred E. Mann Foundation for Scientific Research v. Cochlear Corp., No. 2009-1447 (Fed. Cir. 5/14/2010) the issue was whether a patent licensor had standing to sue.  The Mann Foundation (AMF) licensed US 5609616 and US5938691, both pertaining to cochlear implants for the treatment of hearing loss, to a firm called Advanced Bionics (AB) in […]


Federal Circuit Issues Two § 156 Decisions

05.12.10 Posted in Federal Circuit Opinions by

On Monday, May 10, 2010, the Federal Circuit issued two decisions dealing with 35 U.S.C. § 156 (patent term extension to compensate for regulatory delays). In Ortho-McNeil Pharmaceutical, Inc. v. Lupin Pharmaceuticals, Inc., No. 2009-1362 (Fed. Cir. 5/10/2010) (Judges Newman, Rader, Linn; opinion by Newman).  Daiichi Pharmaceuticals owns U.S. 5,053,404, and obtained a patent term […]


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