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Don’t Get Caught Watching the Paint Dry: Patent Term Adjustment and Replies After Final

As patent practitioners, so much of what we do is managing deadlines, devising strategy within those deadlines and evaluating the impact of delay.  The importance of this is illustrated in Intra-Cellular Therapies, Inc. v. Andrei Iancu[1] where the Federal Circuit upheld a decision by the District Court for the Eastern District of Virginia on patent term adjustment (PTA).[2]  It serves as a reminder to practitioners that in addition to other tactical considerations involved in replying to a Final Office Action, they must also account for its effect on PTA.

Make Mine Extra-Crispy: Deep Fryers, Motivation-to-Combine, and Secondary Conditions in Obviousness Analysis

In Henny Penny Corp. v. Frymaster LLC[1] the Federal Circuit upheld the Patent Trial and Appeal Board’s inter partes review decision that claims 1-3, 5-12, 17-21, and 23 of Frymaster’s patent U.S. 8,497,691 (‘691 Patent) were not unpatentable as obvious.[2]  It is an interesting case because it illustrates a finding of nonobviousness where the Board not only held that there was no motivation to combine, but endorsed a showing of secondary considerations.

Fluid Catalytic Cracking Patents – 2018/2019: Catalyst Systems

This is an article in a series reviewing Fluid Catalytic Cracking (FCC) patents granted in approximately the last year.  In particular, the patents highlighted here relate to FCC catalyst and additive systems.  One take-away from this review is that the number of such patents as a percentage of the entirety of FCC-related patents, including those related to equipment, processes, feed treatment, environmental, etc., is down to less than a quarter.  This may reflect a shift in research dollars away from the catalyst area, or at least a shift in those research dollars directed to acquiring patentable inventions.  The second take-away is that the catalyst related patents are largely directed to integral multiple zeolite systems for increasing light olefins production, such as USY and ZSM-5.  This was already a fairly crowded area, however, in U.S. Patent No. 10,173,206 assigned to Albemarle Europe SPL, an interesting approach was to combine a Y zeolite exchanged with a non-rare earth material selected from magnesium, calcium or strontium, with a ZSM-5 zeolite, where the ratio of the two zeolites was specified.

Nuvo Pharmaceuticals v. Dr. Reddy’s Laboratories: Nonobvious Pharmaceutical Formulation Must Be Demonstrated

In Nuvo Pharmaceuticals v. Dr. Reddy’s Laboratories (Fed. Cir. 2019), the Federal Circuit held that a patent on a claimed pharmaceutical formulation was invalid for having an inadequate written description, even though the patent disclosed, in sufficient detail, effective formulations.

Enhanced Oil Recovery Patents – 2018/2019: Ancillary Systems

It is typical for primary aspects of a technology to be recognized as a valuable asset; things readily perceived as inventive deviations from the conventional, technical inflection points that set processes or products apart from comparative offerings of competitors.  Organizations readily recognize such inventions as needing patent protection.  However, patentable inventions don’t always spring from multi-million-dollar R&D budgets.  Often, they result from engineers and scientists simply focusing on the best way to solve a problem, perform some function more efficiently, or getting more product out the door.  As such, they don’t necessarily relate to the central portion of a process or technology.  Nor do they always appear as something patentable, if to the untrained eye they merely resemble useful twists on things known.  For example, boilers, steam generation and their corresponding controls have long been used, however, Patent No. 10,125,973 applies a steam generation process to oil production.  Magnetic separation processes are also known; however, Patent Nos. 10,138,410 & 10,150,908 demonstrate applying a form of magnetic separation to purifying injection well water.  Everyone learns about precipitation separation of compounds from aqueous solutions in chemistry lab, however, Patent No. 10,258,920 demonstrates an application to a Kuwait oilfield.

Enhanced Oil Recovery Patents – 2018/2019 CO2 Injection

Carbon Dioxide injection has been used effectively for enhanced oil recovery from reservoirs, since at high pressures it forms a miscible mixture with oil, increasing the volume of the oil, and allowing it to dislodge additional material from the rock as it pushes through the formation.[1]  CO2 injection is often used in a process known as water alternated with gas (WAG), where the gas and water are alternately injected into the well, thereby mitigating the tendency of the lower density gas to migrate to the top of the reservoir and bypass other sections.[2]  Interest in CO2 injection continues, not simply in conventional oil reservoirs, but in unconventional reservoirs as well.[3]  Not surprisingly, aspects of CO2 injection find their way into patent claims.

Dilworth IP’s Website Honored with Platinum Award

Dilworth IP is very excited to announce that our new website, launched earlier this year to more accurately represent the culture and values of our firm, has been chosen from over 200,000 entries as a Platinum Winner of the prestigious Hermes Award—an honor awarded to only 1% of applicants. The Hermes Creative Awards is an international competition that is administered and judged by the Association of Marketing and Communication Professionals (AMCP), and recognizes excellence in the concept and design of marketing programs. Entries are submitted from a wide array of industries, and are judged at random on a point system according to their particular merits rather than directly compared to other entries

Lack of Obviousness in Methods for Cancer Treatment

The ‘209 Patent includes method claims where folic acid and a methylmalonic acid lowering agent (e.g., vitamin B12) are administered prior to treatment with the antifolate pemetrexed disodium, a chemotherapy agent.[3]  The folic acid and methylmalonic acid are used to ameliorate the toxic effects of the pemetrexed.[4]  The heart of the Board’s conclusion was that although it was known to use folic acid to reduce the toxicity of antifolates such as pemetrexed, there was no reason to pretreat with vitamin B12 and folic acid prior to treatment with pemetrexed for cancer.[5]  On appeal, the Petitioner’s obviousness arguments related to the EP005 reference, which taught use of folic acid in conjunction with vitamin B12 to reduce homocysteine levels for all purposes.[6]  Homocysteine is an amino acid, and when present in high levels is predictive of pemetrexed toxicity.[7]  On its face this appears to be a solid case for obviousness.  Indeed, those arguing against motivation to combine during patent prosecution have almost certainly encountered an Examiner’s response referencing MPEP 2144IV at one time or the other: