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The Enablement Requirement: A Limit on Greed

Magsil Corporation v. Hitachi Storage Technologies (Fed. Cir., 2012)

Thus we descended into the fourth chasm,
Gaining still farther on the dolesome shore
Which all the woe of the universe insacks.
–The Inferno, Canto VII, Dante Alighieri

Although patent validity is more frequently challenged on the basis of uncited or ill-considered prior art, Section 112 issues, including the requirement of an enabling disclosure, are underutilized as a basis of attack […]

Of Suits and Bottles

Ethox Chemicals LLC, a small specialty chemical developer based in South Carolina, is suing Coca-Cola Co. over a new additive for polyethylene terephthalate (PET) bottles [1], [2]. Ethox is claiming that the beverage giant misappropriated its molecule bis(2-phenoxyethyl) terephthalate (PEM), an additive designed to enhance the gas barrier properties of plastic containers made from PET. Ethox says PEM can be used to reduce gas permeation which might help extend bottled soda shelf-life and allow beer to be sold in PET bottles.

Joanne Davis Joins the Dilworth Team!

Dilworth IP is pleased to announce the addition of Joanne Davis to our team of professionals. Joanne’s years of experience in the practice of law have been focused in the corporate sphere with an emphasis on transactions, commercial and joint-venture agreements, and technology licensing. In the past, she has worked in the chemical, financial, health care and industrial business sectors, including 16 years in-house at a publicly traded, multi-national chemical manufacturer […]

Wrigley and Cadbury Adams Get Chewed

Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC (Fed. Cir., June 22, 2012)
Chewing gum has come a long way since, as a youth, I opened a pack of Juicy Fruit® gum just to inhale its marvelous aroma. As a law student, I felt unprepared for class without a stick or two of Doublemint® gum to calm the nerves and sharpen the brain. Then came the rivals to challenge Wrigley with creatively packaged products iced with the latest . The chewing gum wars began in earnest. This battle pits heavyweight Wrigley against upstart Cadbury Adams.

To Plea or Not to Plea: IP Theft Cases Advance

Recently, two cases involving IP theft advanced against two scientists.

A former Sanofi scientist accused of stealing trade secrets from Sanofi, a global drugmaker, has recently been sentenced to jail.

Four months after pleading guilty to stealing trade secrets from her former employer, Sanofi, and selling Sanofi compounds through another company in which she held an interest […]

Unsanctioned by the Victim: The High Cost of Hindsight Reconstruction

Hindsight reconstruction at the hands of a well-meaning patent examiner has victimized many a patent applicant. The examiner has a daunting task. He or she must review a new disclosure and claims, quickly grasp the nature of the invention, search for related prior art, and then (metaphorically) hop into the nearest flux capacitor-modified DeLorean, punch in the time, and accelerate to 88 mph […]

Some Words about Invention Promotion Firms

Invention Promotion Firms (IPFs) hold themselves out as providing a range of valuable services to novice inventors. For example, many of these firms offer to evaluate the patentability of inventions, file patent applications, present the invention to manufacturers, build prototypes, and market inventions. They often point out that most conventional services, i.e., law firms and marketing consultants […]

Know Your Handbook

In Aventis Pharma S.A. v. Hospira Inc., No. 2011-1018 (Federal Circuit April 9, 2012), the court relied on disclosure in a non-patent literature reference in its decision.

The case involved US Patents No. 5,750,561 and 5,714,512 directed to compositions containing taxane derivatives (compounds found in yew trees; cf.). The patents are assigned to Aventis Pharma S.A. Consolidated actions were brought by Aventis Pharma S.A. and Sanofi-Aventis U.S., LLC against Hospira Inc, Apotex Inc., and Apotex Corp. for patent infringement.

Clarity on the Obvious

In Eurand v. Mylan, No. 2011-1399, -1409 (Federal Circuit, April 16, 2012), the Federal Circuit provided some useful analysis in dealing with hindsight methodology and obvious-to-try theories. The case involved U.S. Patent Nos. 7,387,793 and 7,544,372 of Aptalis Pharmatech, Inc. (“Aptalis”), directed to extended-release dosage forms of muscle relaxants (cyclobenzaprine hydrochloride).

Claim Construction: One Hole of a Mess

On April 3, 2012, the Federal Circuit ruled (2 to 1, opinion by Judge Lourie) that a district court (N.Y., N.D.) incorrectly granted summary judgment of noninfringement in favor of J&L Fiber Services, Inc. (“J&L”). Advanced Fiber Technologies (“AFT”), owner of U.S. Pat. No. 5,200,072 and RE 39,940, sued J&L after it began selling its V-Max wedgewire screens for use in paper and pulp processing.