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Author: William Reid

Lead Compound Analysis in Mylan v. RCT

Lead compound analysis (LCA) has been used in the evaluation of chemical compound Obviousness for the past 20 years.[1]  This approach supplemented the historic formulation of In re Dillon.[2]  While the Dillon analysis pivots about the structural similarity of the cited compound to that claimed and any motivation to make the claimed compound, LCA involves selection of a lead compound that is the most promising candidate for modification to improve its activity.  As such, it represents a somewhat more difficult standard than in Dillon.

Determining Trademark Confusion with DuPont Factors

Forty years ago, people were dancing to Stayin Alive by the Bee Gee’s, munching on Reese’s Pieces for the first time, and watching John Travolta & Olivia Newton-John in Grease, and Jamie Lee Curtis in Halloween (the first one!).  A lucky few were playing Space Invaders on their Atari 2600, or DOS-based games on their Apple II computer; and the iPhone was not yet a glint in Steve Jobs’ eye.  Coincidentally, forty years ago the mark “GUILD INVESTMENT MANAGEMENT” (GIM) was being used by Guild Investment Management, Inc. for investment advisory services while the mark “GUILD MORTGAGE COMPANY” (GMC), owned by Guild Mortgage Company (Guild), was being used for mortgage banking services.[2]  Nevertheless, decades later an application for the GMC mark in International Class 36 was refused by the Examiner, who argued that there was a likelihood of confusion with the GIM mark because “the marks, nature of the services and trade channels were similar.”[3]  The Trademark Trial and Appeal Board agreed, despite finding that “consumers ‘may exercise a certain degree of care in investing money, if not perhaps in seeking a mortgage loan.’”[4]  Guild appealed to the Federal Circuit.

Obviousness, Prodrugs and the Rule of 5: Amerigen Pharmaceuticals Limited v. UCB Pharma GmbH

In Amerigen Pharmaceuticals Limited v. UCB Pharma GMBH, 2017-2596 (Fed. Cir. January 11, 2019), the Federal Circuit upheld the Board’s IPR finding that claims 1-5 and 21-24 of UCB’s U.S. Patent 6,868,650 were not obvious.[1]  The patent claims cover Toviaz® (Fesoterodine), an antimuscarinic drug to treat urinary incontinence.[2]  Judge Lourie included a remark […]

Assignor Estoppel & Inter-Partes Review: Arista Networks, Inc. v. Cisco Systems, Inc.

Arista Networks, Inc. (Arista) petitioned for an IPR of Cisco Systems, Inc.’s (“Cisco”) patent, U.S. 7,340,597, relating to protecting computer network systems from outside attack using a logging module.[1] Claims 1 and 29 are as follows: 1.An apparatus comprising: a communications device comprising: a subsystem; and a logging module, coupled to […]

Stone Basket Innovations v. Cook Medical LLC : When Is a Case “Exceptional” for the Purposes of §285?

Stone Basket Innovations (SBI) sued Cook Medical LLC (Cook) for infringement of its patent, U.S. Patent No. 6,551,327 (‘327 Patent) in the U.S. District Court for the Eastern District of Texas.[1]  Subsequently, the case was transferred to the U.S. District Court for the Southern District of Indiana (Southern District).[2]  The […]

Fluid Catalytic Cracking Patents – 2017, Part I: Catalytic Compositions/Synthesis

This is the first article in a review of patents issued in 2017 in the area of Fluid Catalytic Cracking (FCC).  The summary below covers six patents related to fluid cracking catalyst compositions/synthesis. One technique for categorizing patents related to Fluid Catalytic Cracking is to group them in certain categories:  […]

From A[pple] to Z[eroclick]: The Federal Circuit Overrules District Court in Zeroclick, LLC v. Apple, Inc.

In Zeroclick, LLC v. Apple Inc., 2017-1267 (Fed. Cir. June 1, 2018), the Federal Circuit overruled the U.S. District Court for the Northern District of California for improperly interpreting claims regarding the application of 35 U.S.C. §112, ¶ 6.  The case related to an appeal from an action where Zeroclick had […]

Upcoming Free Webinar: The Pros and Cons of Trade Secrets & Patent Protection

William Reid, Partner at Dilworth IP, will be presenting a free webinar on Wednesday, December 13th at 1:00 PM EDT entitled, “Should You Keep It Secret? The Pros and Cons of Trade Secrets and Patent Protection.” You know that protecting your intellectual property is important. A strong IP portfolio is essential to insure economic advantages over your competitors – but what type of protection should you pursue? Patents are well recognized, but in many instances, protection can be limited…or even unavailable. Other times, you may not want to publicly disclose your invention in a patent application. Trade Secret protection – while potentially much more applicable to your business needs than patents – is also more fragile; and has completely different rules of the road in terms of stewardship.

Strong Nonobviousness Push-Back to the District Court for the District of Delaware Millennium Pharmaceuticals, Inc. v. Sandoz Inc.

In Millenium Pharmaceuticals Inc., v. Sandoz Inc., 2015-2066, 2016-1008, 2016-1009, 2016-1010, 2016-1283, 2016-1762 (Fed. Cir. July 17, 2017), the Federal Circuit pulled no punches in overruling the Districts Court’s finding of patent invalidity for U.S. Patent No. 6,713,446 (446 Patent), exclusively licensed by Millennium.  The case related to Velcade®, used in chemotherapy for the treatment of multiple myeloma.  Such was the drug’s effectiveness that it “changed the decades-old standard of care for multiple myeloma and has saved thousands of lives.