Posts in IPWatchdog Articles

A Comment on In re Cellect: The Patent Bar Must Push for Eliminating ODP Altogether, Not Interpreting it More Favorably

In an IPWatchDog post of September 6, 2022, Anthony Prosser and I traced the history of the doctrine of “Non-Statutory Judicially Created Obviousness-Type Double Patenting” (ODP). We confirmed (as its name indicates) that no Congressional statute has ever codified this doctrine. It is ultra vires because Congress has the sole right to create patent law…. In the Cellect decision issued yesterday, the Federal Circuit stretches the word “disclaimer” in Section154(b)(2)(B) beyond credibility as justification for the ODP doctrine itself and assumes that is what Congress was talking about without actually saying it (stating with agreement that “The Board also reasoned that terminal disclaimers arise almost exclusively in situations to overcome ODP rejections, and so Congress, by addressing terminal disclaimers in §154, effectively addresses ODP”).

Pfizer/BioNTech Take COVID Vaccine Fight with Moderna to PTAB

Pfizer, Inc. and BioNTech SE on Monday hit back at competitor COVID-19 vaccine maker Moderna with inter partes review (IPR) petitions against two Moderna patents on mRNA vaccine technology at the Patent Trial and Appeal Board (PTAB). Pfizer/ BioNTech told the PTAB that Moderna’s patents include “unimaginably broad claims directed to a basic idea” and asked the Board to cancel all of the challenged claims of both patents.  

CAFC Issues Precedential Ruling on Proper Analysis for Patent Term Adjustment in Double Patenting Cases

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today in In re Cellect holding that patent term extension (PTE) and patent term adjustment (PTA) are not the same for purposes of an obviousness-type double patenting (ODP) analysis. Specifically, the court said that “ODP for a patent that has received PTA, regardless whether or not a terminal disclaimer is required or has been filed, must be based on the expiration date of the patent after PTA has been added.” The opinion was authored by Judge Lourie.

The New Challenge to Employee Confidentiality Agreements

Noncompete agreements have always been controversial to some extent. Employers like them because they avoid messy litigation over whether the employee has breached confidentiality; a noncompete eliminates the risk as a practical matter. But it is a blunt instrument, preventing fair as well as unfair competition…. In contrast, employee confidentiality agreements have almost universally been embraced by courts, even though they usually operate in perpetuity to restrain use or disclosure of information. This is mainly because even without a contract, the common law recognized a duty of confidentiality by all employees to respect the trust implied by having access to secrets.

This Week in Washington IP: Improving Invention Education, Intellectual Property Rights During Public Health Emergencies, and the State of the Chinese Economy

This week in Washington IP news, as a new school year begins, the United States Patent and Trademark Office (USPTO) looks at the latest research on invention education. Congress is still on vacation, yet hot topic issues are still being discussed elsewhere, including the Center for Strategic and International Studies (CSIS) looking at the state of the Chinese economy, and the American Enterprise Institute discussing what the U.S. federal government can do to patent rights during a public health emergency.

PGR Petition Alleges Gilead Sciences Made Inconsistent Section 112 Arguments

This past week, IPWatchdog was made aware of a petition for post-grant review (PGR) proceedings at the Patent Trial and Appeal Board (PTAB) that raises interesting arguments about allegedly inconsistent statements on patentability made during legal proceedings by pharmaceutical firm, Gilead Sciences. Filed in early August, the PGR petition from Atea Pharmaceuticals cites 35 U.S.C. § 112 arguments previously raised by Gilead in other cases to challenge the validity of Gilead’s own patent claims that were allegedly obtained to block Atea’s competing hepatitis C virus (HCV) treatments.