Case Laws
Paragraph IV Notice Letter
(SHWARTZ, United States Magistrate Judge,15-Dec-2011)
This matter comes before the Court by way of the parties’ joint letter, dated April 6, 2011, seeking a ruling as to whether Defendant Tolmar’s Paragraph IV Notice Letter [“Paragraph IV Notice Letter”] is a confidential document that should be protected from unrestricted disclosure under the Discovery Confidentiality Order.
Acknowledgment - Thanks to Mr. David A. Loewenstein of Pearl Cohen Zedek Latzer LLP for drawing attention to this case More...
Delhi Patent Office Rejects Boehringers Application No. 924/DELNP/2006 Citing Section 3(d)
(J.Sai Deepak,11-Sep-2011,Delhi Patent Office and Demanding Mistress.blogspot)
Boehringer Ingelheims Application No. 924/DELNP/2006 was rejected by the Delhi Patent Office earlier this year under section 3(d) of the Patents Act.
Acknowledgment - Thanks to Mr. J.Sai Deepak for drawing attention to this case and The Demanding Mistress.blogspot More...
The Demanding Mistress-Lesson for Applicants: No Room for Internal Docketing Errors
(J.Sai Deepak,3-Sep-2011,Delhi High Court and Demanding Mistress.blogspot)
Delhi Patent Office delivered in a hearing dated July 26, 2011 in connection with the application 5043/DELNP/2011.
Acknowledgment - Thanks to Mr. J.Sai Deepak for drawing attention to this case and The Demanding Mistress.blogspot More...
Writ Petition filed in the Madras High Court challenging the constitutionality of the Intellectual Property Appellate Board
(Manoj G. Menda,7-Feb-2011,Intellectual Property Law Practitioners Association)
The present writ petition has been filed seeking a Writ of Declaration declaring Chapter XI of the TradeMarks Act,1999,and Chapter XIX of the Patents Act,1970, More...
Takeda files Para IV infringement suit against Aurobindo
(Gireesh Babu, Mumbai,11-Mar-2010,Chronicle Pharmabiz)
The Japanese drug major Takeda Pharmaceuticals and its US arm sued the Hyderabad based Aurobindo Pharma and its US subsidiary for alleged Para IV patent rights infringement More...
Delhi High Court rules on Section 8 and 47 of the Patents Act
(Prashant Reddy,20-Nov-2009,Delhi High Court and SPICY IP)
Acknowledgment - Thanks to Sumathi's wizadry over Google and Prashant Reddy for drawing attention to this case and Spicy IP More...
Entrepreneurs List @ Venture Center: ISBA Awards, Revised
(Kaushik Gala ,17-Nov-2009,Venturecenter)
Below is a compilation of resources events & news of interest courtesy of Venture Center. More...
Strix Ltd v Maharaja Appliances Ltd - Importance of filing for REVOCATION
(6-Nov-2009,Delhi High Court and Spicy IP)
The Delhi High Court granted interim injunction restraining Maharaja Appliances from manufacturing and marketing Maharaja Whiteline electric kettle Model No EK 172 as it infringed Strixs patent IN 192511 US 6080968.
Acknowledgment - Thanks to Mr.Feroz(Pharma Patents), for drawing attention to this case and Spicy IP for the Report. More...
The case of the Fabulous Fake
(Suchita Saigal ,26-Oct-2009, SPICY IP)
In light of a recent decision of the UK High Court tweeting might just have a new meaning. More...
Ortho-McNeil Pharmaceutical,Inc v.Teva Pharmaceuticals Industries,Ltd.,et.al
(23-Sep-2009,United States Court)
This case is a patent law appeal from a district court order granting summary judgment of invalidity based on anticipation and obviousness. More...
F Hoffmann La Roche Ltd v Cipla Ltd
(24-Apr-2009,The High Court of Delhi)
The High Court of Delhi dismissed the appeal filed by F Hoffmann La Roche Ltd alongwith costs quantified at Rs 5 lakhs to restrain Cipla from manufacturing and selling Erlotinib. More...
Bristol -Myers Squibb Company & Ors Vs. Dr. BPS Reddy & Ors Hetero Drugs
(19-Dec-2008,Delhi High Court and Spicy IP)
It is expected that the Drug Controller General of India while performing statutory functions will not allow any party to infringe any laws and if the drug for which approval has been sought by the defendants is in breach of the patent of the plaintiffs, the approval ought not be granted to the party.
Acknowledgment - Thanks to Shamnad Basheer (Spicy IP), for drawing attention to this case. More...
Applicant May Be Own Lexicographer
(5-Jan-2009,MPEP, USPTO)
An applicant is entitled to be his or her own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s). See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994) More...
The Words Of A Claim Must Be Given Their Plain Meaning Unless Such Meaning Is Inconsistent With The Specification
(5-Jan-2009,MPEP, USPTO)
Although claims of issued patents are interpreted in light of the specification, prosecution history, prior art and other claims, this is not the mode of claim interpretation to be applied during examination. During examination, the claims must be interpreted as broadly as their terms reasonably allow. More...
Plain Meaning Refers To The Ordinary And Customary Meaning Given To The Term By Those Of Ordinary Skill In The Art
(5-Jan-2009,MPEP, USPTO)
The ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application. More...
It Is Improper To Import Claim Limitations From The Specification
(5-Jan-2009,MPEP, USPTO)
Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. More...
Madras High Court sets aside patent on valganciclovir
(3-Dec-2008,www.lawyerscollective.org )
In a landmark judgment, a bench of the Madras High Court comprising Chief Justice A. K. Ganguly and Justice Ibrahim Kalifulla yesterday set aside the patent granted to F. Hoffman-La Roche AG (Roche) for valganciclovir (Patent No. 207232) for failure of the Indian patent office to comply with the patent law and remanded the matter back to the Patent Controller. The judgment setting aside the patent was delivered in a petition filed by two Indian patients groups Indian Network for People Living with HIV/AIDS (INP+) and Tamilnadu Networking People with HIV/AIDS (TNNP+) who challenged the Indian Patent Offices decision to grant a patent without hearing the pre-grant opposition filed by them. More...
Abbott Labs v. Sandoz, Inc.,
(21-Oct-2008)
The Federal Circuit affirmed the district courts grant of a preliminary injunction against Sandoz, Inc. (Sandoz), enjoining it from infringing U.S. Patent Nos.6010718 (the 718 Patent), which concern extended release formulations for the antibiotic drug Clarithromycin. The Federal Circuit concluded that the district court did not abuse its discretion in granting the injunction pendente lite because the court properly held that Sandoz did not show a likelihood of success on the merits on the issues of invalidity, inequitable conduct, and infringement.
Acknowledgment - Thanks to Alston+Bird LLP, for drawing attention to this case law More...
Natco Pharma Limited v. Union of India and Others
(1-Oct-2008)
The Honourable SC of India has directed the reconstitution of IPAB with the inclusion of a new technical member, Dr. P.C.Chakraborti, Deputy Controller of Patents & Designs, in place of Central Government appointed S. Chandrasekaran. The SC has further directed the IPAB to list the pending Appeals (Nos.TA/001/2007/PT/CH to TA/005/2007/PT/CH) before it for directions on 3rd November, 2008. The matter will be heard and disposed of on day-to-day basis, preferably in the month of November, 2008. More...
F. Hoffmann- La Roche Vs.Cipla Ltd
(19-Mar-2008)
This order disposes of an application seeking ad-interim injunction, restraining the defendant (Cipla) from manufacturing, offering for sale, selling and exporting the drug Erlotinib, for which the plaintiff (F-Hoffmann-La Roche Ltd) holds a patent. More...
Roche Palo Alto & Allergan v Apotex
(9-Jul-2008)
The Federal Circuit maintained its record of never affirming a finding of non-infringement under the Reverse Doctrine of Equivalents. In this case, the Court held that relying solely on an expert opinion to establish “principle” of the claimed invention was insufficient to establish a prima facie case under the doctrine. In addition, the Court held that when the ingredients and concentrations of two formulations are both within the scope of the allegedly infringed claims, the two formulations are “essentially the same” for the purpose of evaluating claim preclusion, regardless of a possible difference in mechanisms of action in two formulations. The Court also confirmed that Claim preclusion was not limited by a “change of law” or fairness exception.
Acknowledgment - Thanks to Alston+Bird LLP, for drawing attention to this case law. More...
Zenith Electronics Corporation v. PDI Communication Systems, Inc
(16-Apr-2008)
This is a patent infringement case. Two patents are at issue: US 5,495,301 (the “301 patent”) and US 5,502,513 (the “’513 patent”) owned by Zenith. The ’301 and ’513 patents generally relate to televisions and wired remote control devices used in hospital rooms. Zenith appeals from the final judgment of the United States District Court for the Northern District of Illinois in favor PDI in Zenith’s suit against PDI for infringement of the ’301 and ’513 patents. The district court entered judgment in favor of PDI after granting summary judgment of (1) invalidity of claim 1 of the ’301 patent and claim 1 of the ’513 patent by reason of anticipation; (2) noninfringement of the ’301 patent; and (3) noninfringement of claim 1 of the ’513 patent. More...
Caraco Pharma Labs v Forest Labs, Inc., & H. Lundbeck – Escitalopram
(01-Apr-2008)
This is an action brought under the Declaratory Judgment Act, 28 U.S.C. §§ 2201, 2202, and the provision of the Hatch-Waxman Act establishing civil actions for patent certainty, 21 U.S.C. § 355(j)(5)(C). Plaintiff-Appellant Caraco Pharmaceutical Laboratories, Ltd. (“Caraco”) appeals a decision of the United States District Court for the Eastern District of Michigan dismissing its declaratory judgment action for noninfringement against Defendants-Appellees Forest Laboratories, Inc., et al., (“Forest”). Caraco’s action was dismissed for lack of Article III jurisdiction on the grounds that it had been rendered moot when Forest unilaterally granted Caraco a covenant not to sue for infringement of the patent-in-suit, U.S. Patent No. 6,916,941. However, in the context of the Hatch-Waxman framework, Forest’s covenant not to sue did not eliminate the controversy between the parties. Accordingly, we hold that Caraco’s declaratory judgment action presents a continuing Article III controversy, and reverse and remand for further proceedings. More...
Pfizer et al. v. Teva Pharms
Judge John C. Lifland of the U.S. District Court for the District of New Jersey adjudged all three of Pfizer's patents on Celebrex (celecoxib) to be valid, enforceable, and infringed by Teva. It was held that the patent Nos. 5,466,823 and 5,563,165 covering the active ingredient and a pharmaceutical composition thereof, are valid, enforceable and infringed by the Teva. Further, it was ruled that third patent No. 5,760,068 covering the use in the treatment of inflammation was invalid. More...
Ortho-Mcneil Pharma Inc V. Caraco Pharmaceutical Labs Ltd
(By Staff Writer,21-Apr-2008,Pharmaceutical Business Review)
Caraco Pharmaceutical Laboratories has confirmed that the District Court of New Jersey has granted the company's motion for summary judgment that the claims of US patent that Ortho-McNeil Pharmaceutical asserted against Caraco are invalid. Caraco's tramadol with acetaminophen product is a generic version of Ortho-McNeil's Ultracet. More...
Triantafyllos Tafas v. Jon W. Dudas, et al & Smithkline Beecham Corporation, et al. v. Jon W. Dudas, et al
(01-Apr-2008)
Eastern District of Virginia rejected the PTO's attempts to enact new rules concerning patent claims and continuations and ruled in favor of GSK on summary judgment. Acknowledgment - Thanks to Mr.H.Keeto Sabharwal of Blank Rome LLP, for drawing attention to this case law. More...
Teva Pharma USA INC v Pfizer INC
(21-Jan-2005,Federal Trade Commission)
Teva’s suit was dismissed for lack of jurisdiction on the ground that, that Teva had failed to establish that an actual controversy existed between it and Pfizer, as required under the Declaratory Judgment Act, 28 U.S.C. § 2201(a). However, Judge Mayer dissented arguing that, listing Patents in the Orange Book is a conduct giving rise to a reasonable apprehension that an Abbreviated New Drug Application (ANDA) filer and declaratory judgment plaintiff will face a patent infringement suit. More...
Markman v. Westview Instruments, Inc.
(23-Apr-1996,Justia)
It was held that, the construction of a patent, including terms of art within its claim, is exclusively within the province of the court. More...
Aristocrat Technologies Australia Pty Ltd. and Aristocrat Technologies, Inc. v. International Game Technology and IGT
ATA missed its US national stage filing by one day. The PTO granted ATA's petition to revive the application based on the applicant's seemingly legitimate claim that the entire delay in filing the appropriate papers was unintentional. Acknowledgment : Thanks to Mr.H.Keeto Sabharwal of Blank Rome LLP, for drawing attention to this case law. More...
Forest Laboratories v. Ivax Pharmaceuticals and Cipla(2007-1059, Fed. Cir. Decided on 5th September 2007)
In a patent dispute involving a patent claiming compounds including an antidepressant citalopram, a judgment upholding the validity of a patent in favour of plaintiffs and enjoining defendants from infringing it is affirmed. The '712 patent issued on August 30, 1994 and relates, inter alia, to a substantially pure enantiomer of citalopram and nontoxic acid additional salts thereof. Acknowledgement : Abstract as forwarded by Dr. V.K. Unni of Nalsar University. Thanks to Dr. V.K. Unni for drawing attention to this caselaw. More...
Smithkline Beecham Corporation & Beecham Group v. Apotex Corp & Torpharm, Inc.
Clinical trials before filing patent application leads to Public use (Majority Judgment).Concurring minority judgment (Judge Gajarsa) says that, crystals formed by nature unaided by man is unpatentable.New Crystals or polymorphs of prior known (already patented) compounds are not patentable as the process of formation of these crystal forms is a naturally occurring process, not involving manual intervention. More...
Purdue Pharma L.P., et al. v. Endo Pharmaceuticals, Inc., et al.
When an inventor uses the terminology it has been surprisingly found and there is nothing surprisingly, but only obvious that follows, the patent is invalid or non-patentable. For eg. any person skilled in the art would understand and appreciate that there is nothing surprising about a different crystalline form which itself is admittedly stated as a mixture of a, and other crystalline as well as amorphous forms, is evidently attempting to obtain the grant of the patent wrongfully through unsubstantiated claims of surprisingly finding of nonexistent novelty. This also is a clear misconduct on the part of the applicant to wrongfully obtain the patent. More...
Pharmaceuticals Resources & Par Pharmaceuticals v. Roxane Lab
In a recent landmark judgement, United States Court of Appeals for the Federal Circuit arrived at a judgement affirming the earlier district court's decision (summary judgement order) determining that the asserted claim of relevant patents were invalid for lack of enablement as required under 35 U.S.C.112. More...
Abbott lab v.Torpharm Apotex & Apotex Corp
More...
Schwarz Pharma & Warner Lambert v. Paddock Lab
More...
Immunocept Patrice Anne Lee & James Reese Matson v. Fulbright & Jaworski
More...
International Gamco & John Adams & Scott Henneman & Oasis Technologies v. Multimedia Games
More...
F & G Research v. Paten Wireless Tech
More...
In Re Translogic Tech
More...
McKesson Information Solutn Inc v. Bridge Medical, Inc
When related prior art material disclosures are not made in the patent application and are not continuously intimated to the patent office thereafter, such a conduct is considered inequitable and the patent application is to be declared invalid and unenforceable. Incase of prior art materials, disclosures should be made in the patent application and as such should be communicated to the patent office as and when available to the patent applicant. More...
Eli Lilly v. Teva & Dr Reddy.
More...
Pfizer's appeal on Amlodipine turned down by Supreme Court of US.
More...
Pfizer v. Apotex
More...
Eli Lilly and Company v. Actavis Elizabeth Llc
More...
In Re Gabapentin Patent Litigation
Warner-Lambert Co., Pfizer, Inc.,and Godecke Aktiengesellschaft, v.Purepac Pharmaceutical Co. and Faulding, Inc.,and Watson Laboratories, Inc., Watson Pharmaceuticals, Inc.,Watson Pharma, Inc., and Danbury Pharmacal, Inc.,and Teva Pharmaceutical Industries, Ltd. and Teva Pharmaceuticals USA, Inc.,Zenith Laboratories, Inc. (now known as IVAX Pharmaceuticals NV, Inc.), Zenith Goldline Pharmaceuticals, Inc. (now known as Ivax Pharmaceuticals, Inc.)and Ivax Corp.,and Apotex Corp., Apotex, Inc., and Torpharm, Inc.,and Eon Labs Manufacturing, Inc., More...
In Re Omeprazole Patent Litigation
Astra Aktiebolag, Aktiebolaget Hassle, Astra Merck Enterprises Inc., Astra Merck Inc., KBI-E, INC., KBI, Inc., and Astrazeneca LP, v. Andrx Pharmeceuticals, Inc., and Genpharm, Inc., Kremers Urban Development Co., and Schwarz Pharma, Inc., More...
Aventis Pharma & King Pharma v. Lupin LTD
This case relates to Ramipril (Altace). Aventis Pharma & King Pharmaceuticals had sued Lupin for infringing US Patent 5,061,722 (the 722 patent) under the doctrine of equivalents. The District court held that the claims of 722 patent were not invalid. Lupin appealed from these decisions. Aventis cross-appealed for rejection of willful infringement by District court. The Appeals Court, CAFC, found the claims of Aventis's 722 patent obvious over prior art. Merck had originally patented Enalapril and Aventis developed a derivative called Ramipril. The 5(S) stereoisomer of Ramipril in a form substantially free of other isomers was held obvious and hence, claims 1 and 2 were held invalid under under 35 U.S.C. 103 over the SCH 31925 mixture, the 944 patent, and the Enalapril references in the prior art. More...
KSR International Co. vs. Teleflex INC.
When the obviousness of the claim is apparent in light of factors such as, content of the prior art, scope of the patent claim and the level of ordinary skill in the art, summary judgment of invalidity is appropriate. The invalidity judgment of obviousness by the District Court is upheld by the Supreme Court and the Court of Appeals (FC) decision in a narrow rigid manner inconsistent with Sec 103 of 35 USC is reversed. This landmark Judgment further tightens the obviousness criteria in Us Jurisprudence More...
Microsoft Corp. vs. AT&T Corp.
Since, Microsoft does not export from US, the copies of Windows installed on foreign made computers do not infringe the US patents of AT&T Corp. Because no physical object originating in the United States was combined with these computers, there was no violation of 271(f). More...
Medimmune v. Genentech .
The Judgment was delivered by the Supreme Court on Certiorari to the judgment of the US Courts of appeals for the Federal circuit. More...
Pfizer vs. Apotex - Amlodipine case
In this landmark Judgment, the CAFC- Federal Circuit decided that, species claim was obvious in view of prior art genus claim (Amlodpine Besylate/ Maleate over Amlodipine salts), especially when there are no unexpected results. More...
Frazer et al v. Schlegel, et al
(VEXATIOUS PATENT PRIORITY ISSUES,28-Jun-2007)
The most frequently asked question is about 'Priorities'. If a prior application is published later granted later or a later application is granted earlier, who will infringe whom? While in the Pre-TRIPs regime the National filings used to receive favorable treatment, in the Post-TRIPs regime, priority from overseas filings (including PCT) receive respect and due recognition even in countries like USA, where "First to Invent" over "First to File" prevails. In the following Judgment these issues have been analyzed and the decision of the Board of Patent Appeals of USPTO was reversed by the USCA for the Federal Circuit granting priority to the earlier overseas filing. More...
Integra Lifesciences I, LTD., et al. v. Merck KGaA, et al. [corrected]
Famous landmark case on Research Based Exemptions, which went all the way from District Court to the Supreme Court of the USA , has now been finally decided by the USCA for the Federal Circuit on July 27, 2007 (corrected as remanded by the Supreme Court of USA). While Circuit Judge Newman and Circuit Judge Prost delivered majority opinions, Circuit Judge Rader delivered dissenting-in-part and concurring-in-part opinion. More...
Takeda Chemical Industries v. Alphapharm PTY., L
(28-Jun-2007)
In the latest (June 28, 2007) landmark jugdment of the CAFC-Federal Circuit, the Appeal Court has unanimously confirmed infringement of Takeda's patent by Alpharma (Pioglitazone). The case has been distinguished in context over earlier Judgment in KSR v. Teleflex (Supreme Court) and Pfizer v. Apotex (CAFC). INFRINGEMENT CONFIRMED IN THE LATEST (POST KSR V. TELEFLEX AND PFIZER V. APOTEX) DECISION More...
.
.