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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:

Trade secret law provides protection for information that its owner takes reasonable measures to keep secret and that derives independent economic value from not being generally known or readily ascertainable. If a trade secret is misappropriated by another, the owner may be entitled to damages, an injunction preventing further use or disclosure of the trade secret, and in some cases the recovery of attorneys’ fees.

In Endo Pharmaceuticals Inc. v. Teva[1] the Federal Circuit has further clarified the patent eligibility of treatment methods which include natural elements.  The Opinion, which includes comparisons with other cases such as Vanda[2], CellzDirect[3] and Ariosa Diagnostics[4], leaves one crafting such claims on ground that is fairly firm.

At Dilworth IP, we understand that our clients are driven to innovate and advance technology in order to make life better for all humanity. Our aim is to guide them toward this goa. Knowing that our clients require counsel with a sophisticated understanding of their technology, and an empathy for the pressures they face, we have continued to make additions to our team. Our newest team member, Tim Johnson, who joins the firm as a Partner, has over 15 years of experience working in-house. He has an intimate understanding of the pressures facing his clients, and uses this perspective to create tailored strategies for each of them. Tim has technical expertise in the mechanical arts, fasteners/connectors, material science, injection molded devices, metallurgy, hard coatings, sensors, smart appliances, software, manufacturing processes, laminates, and electro-mechanical and IoT devices.

There is a scene in the Big Lebowski where the Dude complains about the lousy day he just had as he tosses down some snacks at a bowling alley bar.  In answer, the Stranger (played by Sam Elliot) offers the above advice as to the Dude’s existential situation.  It didn’t help.  One can almost imagine a similar response from Apple following the Federal Circuit’s decision in Personal Web Technologies, LLC, v. Apple, Inc., 2018-1599 (Fed. Cir. March 8, 2019), since it marked the second time in two years they had won at the Board, only to be disappointed at the Federal Circuit on the same patent, PWT’s 7,802,310 (‘310 Patent)[1].  While the Federal Circuit’s analysis in both cases was nominally different, the underlying theme in both was the need for a proper motivation-to-combine analysis.

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.

The world’s five most valuable companies have $4.4 trillion missing from their balance sheets! While their collective value is more than $4.6 trillion, their balance sheets report just $228 billion in tangible assets. The missing 95% of value is in intangible assets – brands, software code, confidential information (including trade secrets), data and client lists.

Dilworth IP’s Benjamin Lehberger recently spoke at the Lawyer-Pilot Bar Association’s Winter 2019 Convention in Cocoa Beach, FL. Ben’s talk, entitled “Where are We Headed in Space? Charting the Industry’s Trajectory Through Patent Filings” showed how the patent landscape for space technology has changed dramatically over time. Despite NASA being the dominant filer for decades, Ben showed that the last 20 years of filings have been led by private firms. He also considered how the latest patents filings, on technologies such as artificial gravity and global internet access, give insight into what’s next in space.

This article was originally published in the the Greater Bridgeport Bar Association (GBBA) News Brief In January, the Supreme Court issued a ruling on how the commercial life of a new product can become fatal to the possibility of obtaining a patent on that product. This is a perennial issue […]

The DuPont Factors are a set of 13 factors used by the United States Patent and Trademark Office (USPTO) to determine whether there is a likelihood of confusion between two trademarks.