Category Archives: Industry Focus

The Federal Circuit IP Blog Embarks on “The Terrible Twos” and Finds Patent Law Posts More Popular than Procedural Ones

Author: Tyler B. Latcham*
Editor: Elizabeth D. Ferrill

1. Federal Circuit Elaborates on § 101 Analysis Under Step Two of the Alice Test – Section 101 remains a hot topic, specifically as the Federal Circuit finds more claims directed toward computer technology patent-eligible subject matter. This blog summarized BASCOM Global v. AT&T, where the Federal Circuit found claims relating to “filtering Internet content” patent-eligible.

2. Graphical Indicator Patent Gets “Definite” Win Under § 112 ­– This post may have gained interest because the Federal Circuit reversed the district court decision finding a claim indefinite as purely subjective. The case clarifies the indefiniteness test as to allegedly subjective claim language.

3. FDA Request for Justification Found to Provide a Mere Research Suggestion¾Not Conception of Claimed Formulation – In February of this year, this blog covered a Federal Circuit opinion dealing with a generic pharmaceutical company’s unusual argument that the named inventor derived the invention from someone at the FDA based on communications between the inventor and the FDA.

4. Four Network Service Provider Patents Found Patent-Eligible Under § 101 – Continuing the trend of interest in § 101 challenges to computer-based claims, this blog post discussed the tricky “inventive concept” in the Alice Test.

5. Federal Circuit Clarifies Nexus Requirement of Objective Indicia of Nonobviousness – This post was by far the most popular blog post over the last year with close to 500 pageviews. Its popularity may be two-fold. First, the Federal Circuit clarified the nexus requirement in § 103 and found the Board erred when it gave objective indicia of nonobviousness no weight. Second, most patent blogs did not discuss this case at all.

Up-and-Comer:  TC Heartland: Supreme Court Makes Venue Shopping More Difficult for Patent Trolls – This blog post is on track to be the most popular blog we have published. With almost 300 views in less than two weeks after publication, it is already the 7th most popular blog post of the year. The blog covers the highly anticipated and discussed TC Heartland case dealing with venue and the meaning of 28 U.S.C. § 1400(b).


*Tyler B. Latcham is a Summer Associate at Finnegan.


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Make This For Me! Retaining Contractor to Manufacture Patented Product Does Not Trigger On-Sale Bar

Author: Alex Kwan-Ho Chung, Ph.D.
Editor: Lauren J. Dreyer

Last week, the Federal Circuit (en banc) unanimously held that mere sale of services by a contract supplier to manufacture a patent product for the inventor—without transfer of title to the patented embodiments or the right to market the same—does not constitute a “commercial sale” of the invention to trigger the 35 U.S.C. § 102(b) on-sale bar. The Medicines Co. v. Hospira, Inc., Nos. 2014-1469, -1504, slip op. (Fed. Cir. July 11, 2016) (en banc).

Under the on-sale bar, an issued patent is invalid if its embodied “invention” was “on sale” by anyone more than one year before filing an application for the patent (the “critical date”). According to the Supreme Court’s two-prong Pfaff framework, the claimed invention was “on sale” if, before the critical date, it was (i) the subject of a commercial sale or offer for sale; and (ii) ready for patenting. The sole issue of the en banc appeal was the first prong. Continue reading

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The BPCIA’s 180-Day Commercial Marketing Notice Provision is Mandatory for Applicants Exchanging Patent Information Under § 262(l)(2)(A).

Author: Yieyie Yang, Ph.D.
Editor: Aaron Gleaton Clay

The BPCIA’s 180-Day Commercial Marketing Notice Provision is Mandatory for Applicants Exchanging Patent Information Under § 262(l)(2)(A).

In its recent decision, Amgen Inc. v. Apotex Inc., No. 2016-1308 (Fed. Cir. July 5, 2016), the Federal Circuit further interpreted the commercial marketing notice provision of the Biologics Price Competition and Innovation Act (“BPCIA”) and held that the 180-day commercial marketing notice provision under § 262(l)(8)(A) is mandatory even where the applicant exchanges patent information under § 262(l)(2)(A), affirming the district court’s grant of a preliminary injunction against Apotex.

The Federal Circuit reinforced its previous holding in Amgen Inc. v. Sandoz Inc., 794 F.3d 1347 (Fed. Cir. 2015), that the word “shall” in § 262(l)(8)(A) was mandatory and expanded its application to circumstances in which (l)(2)(A) patent information is exchanged. To the Court, the mandatory nature of the notice provision is supported by the statutory language throughout the BPCIA. The Court also reasoned that market entry 180 days after the afforded 12-year exclusivity period was not inconsistent with § 262(k)(7), which only establishes the earliest date for approval, and that such “delay” would be rare since newer biosimilar applicants would seek approval long before the 12-year exclusivity period expires. The Court further emphasized that the legislative history confirmed that the aim of the 180-day notice period is to avoid uncertainties and deficiencies associated with the two-stage litigation contemplated by § 262(l). Finally, rejecting Apotex’s argument to the contrary, the Court concluded that the 180-day notice provision did not conflict with § 262(l)(9), as a declaratory judgment action under § 262(l)(9) is not the sole remedy for violating § 262(l)(8)(A).

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