Patent Infringement: Significant Developments in 2017 and Beyond
Last year, the largest patent infringement verdict in the history of US Patents yet was awarded to Idenix, a subsidiary of Merck, in Idenix Pharmaceuticals LLC v. Gilead Sciences Inc. This development is giving a significant impact on the succeeding cases of fiscal year 2017. As patent infringement cases continue to present stricter rules and regulations for compliance, patent holders need to be abreast of the latest developments that are important in defending and pursuing their cases.
Listen as a panel of distinguished professionals organized by The Knowledge Group provide the audience with an overview of patent infringement involving the latest developments patent holders must be aware of. Speakers, among other things, will offer helpful insights on how to navigate these significant changes in the year ahead.
In a LIVE webcast, the speakers will discuss:
- Patent Infringement Cases in 2017
- Comparison of 2016 and 2017 Cases
- Patent Litigation Trends
- Recent Developments
- What Lies Ahead
Edward O’Connor, Attorney
Avyno Law P.C.
- The U.S. Supreme Court case of Impression Products v Lexmark changed the landscape for foreign first sale patent rights extinguishment
- The U.S. Supreme Ct decision of Impression Products v Lexmark changed the landscape for label license restrictions on after first sale use and repair
- We were able to use a motion to dismiss as a vehicle to obtain review of both Jazz Photo and Mallinckrodt by the U.S. Supreme Ct. in record time after many years of unsuccessfully seeking reversal of those decisions by the CAFC.
- Never underestimate the value of getting the Solicitor general on your side
Donald R. McPhail, Senior Counsel
Taft Stettinius & Hollister LLP
- BPCIA, 42 USC 262(l) – quick overview of the provisions of the Biosimilars Act relating to patents to put cases in context
- Amgen v. Sandoz – Supreme Court held that: (i) the biosimilar applicant does not have to engage in the “patent dance” (and so does not have to provide a copy of its biosimilar application to the reference product sponsor prior to litigation); and (ii) the biosimilar applicant can give the 180-day notice of commercial marketing to the reference product sponsor prior to receiving licensure from the FDA.
- Amgen v. Hospira – Federal Circuit limited discovery available to the reference product sponsor during litigation, even though the biosimilar applicant failed to provide the information sought during the relevant phase of the pre-litigation “patent dance”; likely outcome will be for reference product sponsors to list every conceivable patent during “patent dance” to ensure complete disclosure of manufacturing processes, thereby increasing the burden on biosimilar applicants during the “patent dance” and/or subsequent litigation.
- Amgen v. Apotex – Federal Circuit had previously held (in 2016, when biosimilar applicant could not provide notice until after receiving licensure) that 180-day notice of commercial marketing was mandatory; has effectively been rendered moot by Amgen v Sandoz since biosimilar applicant no longer has to wait until receiving licensure to provide 180-day notice; since then, infringement case was decided in S.D. Florida (late 2016) and oral argument is scheduled to be heard by Fed Circuit in NY in early October 2017.
Richard W. Hoffmann, Attorney
Reising Ethington P.C.
TC HEARTLAND LLC v. KRAFT FOODS GROUP BRANDS LLC
- Patent Venue Before TC Heartland
- Prior Venue Precedent
- Real World Application of Venue
- Statutory Change that Triggered Challenge
- The Supreme Court Decision
- Legal Analysis
- Case Holding
- Effect of TC Heartland
- Effect on Pending Cases
- Where New Cases Can Be Brought
- Domestic Companies
- Foreign (Non-US) Companies
- E.D. Texas Venue Test
- Real World Effect on Court’s Dockets
- Considerations Post TC Heartland
- Identification of non-traditional infringer targets
- More use of notice letters
- Multi-district litigation
Who Should Attend:
- Patent Holders
- Patent Consultants
- Patent Attorneys
- Patent Litigators
- Patent Licensing Attorneys
- IP Attorneys & Consultants
- Litigation Officers
- Litigation Support Specialists
- Private and Public Organizations
- Other Related and Interested Individuals
DONALD R. MCPHAIL is a member of Taft’s Intellectual Property group. Don has more than 20 years of experience in patent and trademark matters before the U.S. district courts, the U.S. International Trade Commission and the U.S. Court of Appeals for the Federal Circuit. He has handled cases involving a wide range of technologies, including avionics, LCD optics, video signaling, semiconductor design and operation, thin film transistor manufacturing and design, voice-over-internet telephony and firewalls, routers and switches, network topology and message routing, LED design and operation, PECVD manufacturing processes, regulated medical devices, computer software and electronic point of sale devices. Don also has experience with contested matters before the U.S. Patent & Trademark Office and the European Patent Office.
Prior to practicing law in the private sector, Don was an examiner with the U.S. Patent & Trademark Office, where he concentrated on applications in the drug and pharmaceutical arts.
DONALD R. MCPHAIL is a member of Taft’s Intellectual Property group. Don has more than 20 years of experience in …
Rick Hoffmann is a shareholder in the firm of Reising Ethington, PC in Troy, MI and has more than 30 years of experience in the intellectual property field. He has a B.S. in Chemical Engineering from Michigan Technological University and a law degree from Michigan State University College of Law. He focuses his practice on intellectual property litigation, having been lead counsel in well over 75 intellectual property cases in courts throughout the United States. He has argued cases before the U.S. Courts of Appeals for the Federal and 6th Circuits, and was co-counsel with now Chief Justice of the United States, John Roberts, in a case before the U.S. Supreme Court. He has been named to Super Lawyers for 12 consecutive years. He is also co-author of the case book, Cases and Materials on Patent Law Including Trade Secrets, 7th edition.
Rick Hoffmann is a shareholder in the firm of Reising Ethington, PC in Troy, MI and has more than 30 …
On May 30, 2017, Ed succeeded in persuading the United States Supreme Court to reverse two long standing decisions of the Court of Appeals for the Federal Circuit. Those cases were Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094 (Fed. Cir. 2001) and Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir.1992). Ed’s case was Lexmark International, Inc. v. Impression Products, Inc., 581 U.S. ___ (2017), 137 S.Ct. 1523 (2017).
Ed presently serves as chair of Avyno Law’s litigation department. His expansive career includes serving as a Public Defender in Palm Beach County, Florida; preparing patent applications for Air Force J.A.G., and serving as “Senior Intellectual Property and Litigation Attorney” with Intel Corp.
He received his law degree from Indiana University Law School, Bloomington, and his Bachelor of Science degree in physics with a calculus minor from the University of Michigan, Ann Arbor.
On May 30, 2017, Ed succeeded in persuading the United States Supreme Court to reverse two long standing decisions of …
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Method of Presentation:
Experience in Patent Laws
NASBA Field of Study:
Business Law - Technical
NY Category of CLE Credit:
Areas of Professional Practice
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About Taft Stettinius & Hollister LLP
At Taft Stettinius & Hollister our 400 attorneys in ten offices practice across a wide range of industries, in virtually every area of law, including Business and Finance, Business Restructuring, Environmental, Health and Life Sciences, Intellectual Property, Labor and Employment, Litigation, Private Client, Real Estate and Tax law. Since 1885, the firm has provided breadth and depth of legal expertise with a trusted business perspective to help our clients reach their goals. To learn more, visit www.taftlaw.com.
About Reising Ethington P.C.
Since its founding in Detroit in 1865, Reising Ethington has specialized solely in the practice of intellectual property (IP) law. Areas of expertise include IP prosecution and litigation, managing worldwide patent and trademark portfolios, post-grant proceedings, trade secrets, and licensing and other IP-related agreements. The firm represents some of the world’s most innovative and foremost IP owners, including automotive manufacturers and suppliers, medical technology companies, aerospace companies, universities, industrial equipment makers, robotics companies, and consumer product companies.
Reising enjoys a rich history of partnership with many of its clients, including in the automotive industry where the firm worked to protect the ideas of automotive pioneers Ransom E. Olds, David Buick, and the Fisher Brothers. Dating back several decades, attorneys at Reising have authored seven editions of the U.S. law school case book Patent Law Including Trade Secrets, published by West Academic Publishing.
About Avyno Law P.C.
Avyno Law PC is an AV rated, full-service technology firm that is well known for providing the highest level of service to its clients.
Our attorneys allow us to offer a broad-based technology practice with strategic representation of our clients in domestic and international arenas. In addition to planning, prosecution, enforcement, litigation and maintenance of patents, trademarks, copyrights and trade dress, our services include new media law, technology transactional, corporate and securities services.
We have significant representational experience throughout various key jurisdictions, including Federal Circuit Courts, the U.S. Supreme Court and the International Trade Commission.
Our clients range from individual inventors and startups to Fortune 500 clients. We are committed to providing a flexible, cost-effective infrastructure with highly competitive rates and customized billing arrangements. Our goal is to operate as an extension of our clients’ business operations and to provide personalized knowledge, counsel and advice.