MoFo Life Sciences

September 19, 2024 - Litigation, Intellectual Property
Under lock and key – Private sales may not qualify as public disclosure
By: Ashley E. Sperbeck and Mark D. McBriar Ph.D.
Recently, the Federal Circuit affirmed a PTAB decision finding that a private sale of a product did not constitute a public disclosure by the inventor of the product.[1] The Leahy-Smith America Invents Act provides exceptions for certain disclosures that would otherwise be considered prior
... ›
August 15, 2024 - Intellectual Property, Litigation, Pharma
Federal Circuit Clarifies Scope of Obviousness-type Double Patenting in Allergan Usa V. Msn Laboratories
By: Jeffrey W. Schmidt Ph.D., Meghan McLean Poon Ph.D. and Karen G Potter Ph.D.
On August 13, 2024, the U.S. Court of Appeals for the Federal Circuit issued a welcomed decision to patentees in Allergan USA, Inc. v. MSN Laboratories Private Ltd. , No. 24-1061 (Fed. Cir. 2024) clarifying the scope of obviousness-type double patenting (ODP) in the
... ›
July 08, 2024 - Litigation, Intellectual Property
Federal Circuit Wades Into Article III Standing in Patent Cases Once Again
By: Ashley E. Sperbeck and Mark D. McBriar Ph.D.
Article III standing can differ from the statutory requirements of 35 U.S.C. § 281 in patent cases. In certain instances, a secured creditor can obtain rights that become actionable only upon default, which may include the ability to license or enforce a patent. However, these rights
... ›
April 30, 2024 - Corporate + Venture Capital, Employment, Financing, Global, Intellectual Property, Litigation, Privacy + Data Security, Regulatory, Startup
When Your Life Sciences Are on the Line: Protecting Your Company’s Most Valuable Asset: Trade Secrets
By: Kate Driscoll, Nathaniel R. Mendell and Jim Krenn
MoFo partners Kate Driscoll and Nate Mendell launched the MoFo life sciences podcast When Your Life Sciences Are on the Line this week, and Episode 1 is now available. The podcast features interviews with legal experts who share insights and advice you just might
... ›
March 29, 2024 - Litigation, United States
USPTO Issues Reminder to Examiners on Proper “Means-Plus-Function” Analysis
By: Karen G Potter Ph.D. and Jeffrey W. Schmidt Ph.D.
On March 18, 2024, the USPTO issued a memorandum to its Examiners reminding them of the resources and proper analysis for interpreting limitations under 35 U.S.C. § 112(f), which are commonly referred to as “means-plus-function” or “step-plus-function” limitations. These types of claim formats provide
... ›
January 12, 2024 - Litigation, United States, Intellectual Property
USPTO Enablement Guidelines After Amgen v. Sanofi
By: Karen G Potter Ph.D., Meghan McLean Poon Ph.D. and Kelsey J. Roberts Kingman Ph.D.
On January 10, 2024, the USPTO released new Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al. The guidelines clarify that the USPTO’s framework for assessing enablement is
... ›
December 22, 2023 - Litigation
Biden Administration Proposes Novel Use of Price as Justification for Agency Exercise of March-In Rights for Government-Funded Inventions
By: Tina D. Reynolds and Daisuke Alexander Gatanaga
Presented as part of its effort to lower what it views as excessive prices for prescription drugs, the Biden administration on December 7, 2023, announced the release of a proposed framework to expand the use of government “march-in” authority under the Bayh-Dole Act. The
... ›
September 15, 2023 - Litigation, Intellectual Property, United States
Patent Term Adjustment Takes a Hit in Cellect Decision
By: Meghan McLean Poon Ph.D.
Recently, the Federal Circuit addressed a significant issue of first impression with respect to obviousness-type double patenting (ODP), holding that ODP applies to patent claims that claim priority to the same application and have different expiration dates due only to patent term adjustment (PTA).
... ›
July 24, 2023 - FDA, Healthcare, Litigation, Pharma, United States
Legal Battles Continue Over Inflation Reduction Act’s Drug Price Negotiation Measures
By: Joseph R. Palmore
In recent months, six different lawsuits have been filed challenging the Inflation Reduction Act (IRA)’s Drug Price Negotiation Program (the “Program”), with a flurry of activity likely in the coming months before the Program’s first deadlines. Below we analyze the latest developments in the
... ›
July 20, 2023 - Intellectual Property, Litigation, Pharma, Biotech, United States
Obviousness in Drug Combinations – Unexpected Results Vs. Unexpected Mechanisms of Action
By: Mark D. McBriar Ph.D., Bu Yin Ph.D. and Ashley E. Sperbeck
Ascertaining the differences between prior art and claims at issue requires interpreting the claim language and considering both the invention and the prior art references as a whole. [1] The Supreme Court emphasized “the need for caution in granting a patent based on the
... ›

Topic Archives: Litigation

Under lock and key – Private sales may not qualify as public disclosure

By: Ashley E. Sperbeck and Mark D. McBriar Ph.D.

Federal Circuit Clarifies Scope of Obviousness-type Double Patenting in Allergan Usa V. Msn Laboratories

By: Jeffrey W. Schmidt Ph.D., Meghan McLean Poon Ph.D. and Karen G Potter Ph.D.

Federal Circuit Wades Into Article III Standing in Patent Cases Once Again

By: Ashley E. Sperbeck and Mark D. McBriar Ph.D.

When Your Life Sciences Are on the Line: Protecting Your Company’s Most Valuable Asset: Trade Secrets

By: Kate Driscoll, Nathaniel R. Mendell and Jim Krenn

USPTO Issues Reminder to Examiners on Proper “Means-Plus-Function” Analysis

By: Karen G Potter Ph.D. and Jeffrey W. Schmidt Ph.D.

USPTO Enablement Guidelines After Amgen v. Sanofi

By: Karen G Potter Ph.D., Meghan McLean Poon Ph.D. and Kelsey J. Roberts Kingman Ph.D.

Biden Administration Proposes Novel Use of Price as Justification for Agency Exercise of March-In Rights for Government-Funded Inventions

By: Tina D. Reynolds and Daisuke Alexander Gatanaga

Patent Term Adjustment Takes a Hit in Cellect Decision

By: Meghan McLean Poon Ph.D.

Legal Battles Continue Over Inflation Reduction Act’s Drug Price Negotiation Measures

By: Joseph R. Palmore

Obviousness in Drug Combinations – Unexpected Results Vs. Unexpected Mechanisms of Action

By: Mark D. McBriar Ph.D., Bu Yin Ph.D. and Ashley E. Sperbeck