Posts Tagged: "Guest Contributor"

When Commercial Success Can Prove Non-Obviousness

Imagine, as a patentee, that you assert your broadly claimed patent(s) against an alleged infringer, and your opponent takes you to the Patent Trial and Appeal Board (PTAB) via an inter partes review (IPR) petition, where they present sufficient evidence of obviousness such that you have to resort to (gulp) secondary considerations. While no dream situation for patentees, it is important to understand the patent owner’s evidentiary burden when confronting obviousness challenges using secondary considerations, such as commercial success, long-felt but unsolved needs, failure of others and unexpected results. Here are three recent Federal Circuit decisions that are informative with respect to successfully (or unsuccessfully) utilizing evidence of commercial success in countering an obviousness attack.

It’s Not Just COVID: Understanding the Drop in U.S. Patent Application Filings

In 2020, the percentage of pending patent applications that were abandoned rose to 62% over a previous four-year drop of 49%-41%. The implication was that patent applicants were cutting back on expenses in response to the adverse economic impact of the coronavirus pandemic. At the same time, there was a 2% drop in the number of U.S. patent applications filed in 2020 and a minor drop of 0.4% in U.S. patent applications filed in 2021, according to preliminary data.

Senate Judiciary Moves Open App Markets Act Forward

On February 3, during an Executive Business Meeting of the Senate Judiciary Committee, Senator Thom Tillis (R-NC) proposed several amendments on the markup of S. 2710, the Open App Markets Act. The bill would apply existing U.S. antitrust law under the Federal Trade Commission (FTC) Act or the Clayton Act for enforcement actions against companies that engage in anticompetitive practices in app stores, such as requiring app developers to use a favored in-app payment system for accessing consumers through that app store.

English FRAND Developments to Watch Out for in 2022

For a long time, the courts in England have been a forum of choice for the resolution of disputes between international parties, with the promise of an experienced judiciary and a cost-efficient approach to discovery and expert testimony. The English Patents Court is no exception, with multi-jurisdictional patent disputes often featuring an English action. In addition to the availability of specialist judges and legal teams, the ability to obtain some discovery when needed (but without the extensive, onerous and costly approach to discovery in the United States), to cross-examine experts at trial and to obtain declaratory relief make the UK an attractive jurisdiction. The thorough and reasoned judgments that can prove useful in parallel litigation across Europe and the general availability of injunctions are also key drivers for patentees.

Two Pharma and Biotech Cases to Watch in 2022

As we enter the second month of 2022, the old saying, “If at first you don’t succeed, try, try again” and the famous line, “I’m not dead,” from Monty Python and the Holy Grail, come to mind to describe two issues we’ll be watching closely this year relating to litigation involving small and large molecule therapies. In the first instance, Amgen recently petitioned the Supreme Court to review the Federal Circuit’s affirmance invalidating several patent claims based on the lack of enablement for genus claims. This case comes on the heels of the Supreme Court’s denial of cert. in Idenix Pharms. LLC v. Gilead Sci. Inc., 941 F.3d 1149 (Fed. Cir. 2019) on similar issues. Amgen now hopes for a better result.