May 23, 2017: Your weekly dose from the world of patents. The Patent Chronicle is led by Syam Anand, who has been at the core of CSG’s development and an entrepreneur himself. This section is your go to destination every week for a capsule dose on the hottest happenings in the patent world. Syam has clinically dissected out every news on the decision, the background and the impact. He is also in the process of building his scicomm team for this section. If you would like to come aboard, mail him at firstname.lastname@example.org
So let’s light up our patent awareness for the week!
Strict limits on patent litigation venues in future
Decision: The US Supreme Court ruled unanimously in favor of TC Heartland in the case against Heinz preventing Heinz from litigating in Delaware.
Reason: The practice of selecting friendly favorable venues was an irritant for majority of patent owners. The court had realized the far-reaching consequences of the case and taken pains to carefully weigh the facts before delivering it’s ruling.
Impact: The case was high profile and closely followed by everyone. Suing for infringement in friendly and favorable venues such as Delaware and the Eastern District of Texas will be impacted in light of this ruling. It is a big win against Trolls favor the two venues.
SCOTUS unanimously overturned Fed Circ and curbed patent forum shopping today in TC Heartland, as predicted here: https://t.co/cVsFS929vz
— Roger Parloff (@rparloff) May 22, 2017
Aurobindo Pharma secures unusual injunctive relief against Mylan
Decision: The Federal circuit granted injunctive relief for Aurobindo in the infringement case brought against it by Mylan on Isosulfan Blue (IB).
Reason: The court felt that Aurobindo is likely to prevail on merits, will likely suffer irreparable harm in the absence of such relief, the balance of equities favor it, and it is in public interest.
Impact: The bigger impact of the ruling comes from the test that was applied by the court to provide relief. Instead of a function-way-result test (product performing substantially the same function in substantially the same way to obtain the same result), the court used the insubstantial differences test (accused product or process is substantially different from the patented one) stating that is more appropriate for chemical arts. The ruling could be a trendsetter giving as much importance to the process as the product. This could bode well for the chemical arts. The relief provided for Aurobindo is a motivation for others interested parties also to strategize their assets.
MYLAN INSTITUTIONAL LLC v. AUROBINDO PHARMA LTD. https://t.co/EytLWk72NZ
— US Fed Cir (@USFedCircuitCt) May 19, 2017
SC to weigh in on Inter Partes Review practice
Decision: The US supreme court decided to take up a case that will review whether USPTO’s PTAB should issue written decisions on all of the claims challenged by a third party in Inter Partes Reviews or just on the claims PTAB chose to review.
Reason: The PTAB usually grants a review based on merits of the likelihood that the petitioner would prevail with respect to at least one claim. In the process, not all the claims are necessarily chosen for review. In scenarios where the petitioner successfully gets the PTAB to invalidate some of the claims in a patent under review, the PTAB issues written decisions only on those that were reviewed in the procedure.
Impact: If it is ruled that PTAB should issue written decisions on all the claims in the contested patent, it will put additional burden on the Board. For the petitioner the written decisions on all the claims will be a useful resource if the Board’s decision is questioned later in the court by the patent owner.
Abbvie’s Humira patent invalidated
Decision: USPTO’s PTAB invalidated Abbvie’s key Humira patent.
Reason: Coherus Biosciences had approached PTAB for invalidating a key patent that covers Humira.
Impact: The patent was set to expire in 2022. Humira brings in multibillion dollars to Abbvie. The impact of the ruling was immediate as the stocks of Abbvie dived and Coherus gained. Coherus is coming up with biosimilars to the Humira. In light of the ruling, they can use the same drug regimen for treatments. Abbvie has other patents that protect the formulations till 2022. Coherus will have to figure out a strategy to deal with the remaining patents that survived while marketing their biosimilar. Needless to say, there are others also wanting to cash in on this turn of events.
— CenterForBiosimilars (@BiosimCenter) May 18, 2017
About the author:
Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.
Feature image source: Wikimedia Commons
Blog design: Abhinav Dey
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.