Patent Office Trials Blog
    • 4/2/2015
      Sughrue is pleased to announce that it will be co-hosting a conference on ANDA litigation with in Seoul, Korea on April 2, 2015. This two day seminar will provide insight into the U.S. Patent Laws and regulations governing the pharmaceutical industry. This conference will focus on current and developing law as well as practical strategies and tactics for litigation. Attendees, both novice and experienced, will leave this conference with a ready roadmap for navigating this specialized field of litigation.

      Sughrue speakers include:
      Mark Boland
      Michael Dzwonczyk
      Chid Iyer
      Sunhee Lee 
      Azy Kokabi
    • 3/31/2015
      The focus of this year’s conference will be “Most Recent Trend of U.S. Bio Pharmaceutical Legal Developments for Taiwanese Companies”

      Join Sughrue’s ANDA team as they participate in a conference on Trends in the Bio Pharmaceutical Patent field. The conference will cover current topics in the ANDA industry including:

      Opening remarks by Susan Pan

      Early Stage Navigation of the Patent Landscape and Paragraph IV Challenge under 505(b)(2) and 505(j) – Chid Iyer and Azy Kokabi

      Early Stage Resolution of a 505(b)(2) or 505(j) case – Chid Iyer

      Effective Litigating a 505(b)(2) of 505(j) case and a Typical Timeline for a litigation under Paragraph IV – Mark Boland and Susan Pan

      Case law update impacting Paragraph IV cases in the past year in the Federal Circuit and notable District Court Decisions – Sunhee Lee & Azy Kokabi

      Litigating alleged infringement of various types of claims usually found in Paragraph IV litigations – Mark Boland

      Effective and Economic launching strategies in view of forfeiture provisions – Sunhee Lee

      IP and Litigation Strategies of Biosimilar/Biologics Development in the United States – Azy Kokabi
    • 3/30/2015
      Partner, Chandran Iyer, will speak at a webcast entitled "Understanding the Law of Joint Ownership of Patents - Right to Impede Infringement Suits in 2015".  This webcast will be produced by one of the leading producers of regulatory focused webcasts, The Knowledge Group.  The event will take place on June 4, 2014 from 10:00 a.m. - 12:00 p.m. EST.  For more information, please click here.
    • 3/17/2015
      This year’s developments in the Biosimilars industry demonstrate that the time for hesitation has passed and that innovators must have a plan for entering the U.S. Biosimilars market. Join partner John Callahan at this year’s U.S. Biosimilar’s conference in Munich. This flagship conference is a must see for EU companies who plan on doing business in the U.S.

      John Callahan will lend his expertise in one of the most watched areas of patent procedures – Post Grant Review – which go directly to the heart of a patent validity challenge. The conference will be held at the Sheraton Munich on April 21, 2015.  For more information on the Biosimilars conference, please click here.
    More News
    • 3/5/2015
      When inter partes reviews were instituted, the Patent Trial and Appeal Board’s Trial Practice Guide indicated that the board expected that most IPR petitions would rely on expert testimony. To date, the board’s expectations have been largely met as most IPR petitions are filed with an expert declaration.
    • 1/30/2015
      Patent litigation has been and remains a very expensive undertaking. According to the American Intellectual Property Association (AIPLA) 2013 economic survey, even a small stakes patent litigation1 can incur average attorney service fees of $500,000 through the discovery phase. This cost can increase to over $3 million for large-stakes cases proceeding to trial.2 The high cost of patent litigation can be attributed to uncertainties in the outcome. In order to present their best case, both plaintiffs and defendants aggressively seek to improve their positions on all legal and technical issues. A “leave no stone unturned” approach can increase the cost of patent litigation tremendously. Arguably, the financial crisis of Fall 2008 did affect patent litigation by bringing cost-pressure to conducting litigation proceedings, in the same manner that the financial crisis heightened cost pressure in many service sectors. In an uncertain financial climate, cost-conscious parties had to exercise selectivity in the legal and technical theories advanced in patent cases.
    • 2/25/2015
      About a decade ago, in an open letter to the Director General of the World Intellectual Property Organization, an international group of 59 top scientists, economists and scholars pointed to the importance to society of the emerging open collaborative projects, implicitly highlighting
      the need for forms of intellectual property which do not have some of the negative effects associated with present forms of IP such as patents.1
    • 2/18/2015
      Federal Circuit, February 18, 2015, 2014-1396

      In Pacing Technologies, LLC v. Garmin International, Inc., the Federal Circuit affirmed the district court's grant of summary judgment of noninfringement, reasoning that the preamble of the asserted claim limited the claim scope and the asserted patent’s specification included a disavowal requiring departure from the plain meaning of the phrase “repetitive motion pacing system.”.

      The accused Garmin products are GPS fitness watches that allow users to design workouts using the Garmin Connect website. The accused products display a user’s actual pace during an activity, but do not play music or output a tempo corresponding to the user’s desired or actual pace.

      The claim at issue is directed to “a repetitive motion pacing system for pacing a user” comprising “a playback device” that the district court construed as “a device capable of playing audio, video, or a visible signal.” Both parties characterized the court’s construction of the term “playback device” as implicitly requiring the devices to play the pace information as a metronomic .tempo.

      The Federal Circuit first held that the preamble of the claim is limiting because “[w]hen limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). The panel stated that the preamble was limiting here because the term “user in the preamble provides antecedent basis for the term “user” in the body and was also necessary to understand the positive limitations in the body of the claim.

      In construing the meaning of the phrase “a repetitive motion pacing system for pacing a user” as recited in the preamble, the Federal Circuit acknowledged that the plain and ordinary meaning did not require the system to pace the user by playing back pace information using a temp. However, the Federal Circuit went on to find that the specification included a clear and unmistakable disavowal that required departure from the plain and ordinary meaning.

      The panel noted that the specification described nineteen “objects of the present invention,” but these statement alone were not found to constitute a disclaimer or disavowal. However, the panel pointed out that the patentee went further by adding the following paragraph subsequent to the enumerated 19 objects:

      “[t]hose [listed 19 objects] and other objects and features of the invention are accomplished, as embodied and fully described herein, by a repetitive motion pacing system that includes…a data storage and playback device adapted to producing the sensible tempo.” (emphasis added)

      The Federal Circuit stated that these words acted as a disclaimer by clearly and unmistakably limiting “the present invention” to a repetitive motion pacing system comprising a playback device adapted to producing a sensible tempo. According to the Federal Circuit, this language was not merely describing another object of the invention, but was instead a statement that the invention accomplishes all of its objects and features with a repetitive motion pacing system in which the playback device produces a sensible tempo. Thus, the Federal Circuit held that Garmin’s accused devices were not within the scope of the claim at issue because the accused devices did not produce a sensible tempo.
    More Publications
    More Events