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Boehringer Ingelheim International GmbH v Barr Laboratories, Inc

Winston & Strawn LLP
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USA
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February 2 2010

In a patent infringement suit involving claims directed to the treatment of Parkinson’s disease, the patent at issue was the third in a chain of related divisional patents

Therasense, Inc v Becton, Dickinson and Co

Winston & Strawn LLP
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USA
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February 2 2010

An applicant’s earlier statements about prior art, especially one’s own prior art, are material to the PTO when those statements directly contradict the applicant’s position regarding that prior art in the PTO

For purposes of determining patent term extension under 35 U.S.C 156, an enantiomer has consistently been recognized, by the FDA and the PTO, as a different “drug product” from its racemate

Winston & Strawn LLP
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USA
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May 18 2010

The patent-in-suit covered an antimicrobial compound having the common name levofloxacin, and is the levorotatory enantiomer of the racemate ofloxacin, which is a known antimicrobial product

Therasense, Inc v Becton, Dickinson and Co

Winston & Strawn LLP
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USA
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February 2 2010

To anticipate, a prior art reference must disclose, either expressly or inherently, all of the elements of the claim arranged or combined in the same way as recited in the claim

Novo Nordisk AS v Caraco Pharm. Labs., Ltd

Winston & Strawn LLP
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USA
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April 23 2010

The Hatch-Waxman Act only authorizes a counterclaim to correct or delete a patent number or expiration date listed in the FDA Orange Book; an ANDA defendant does not have standing to challenge any other listed information, including the use code description

In determining patent term extensions under 35 U.S.C. 156, the statutory term “active ingredient” means the product, not the active moiety of the product, that is present in the approved drug

Winston & Strawn LLP
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USA
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May 18 2010

The patentee owned a patent to a chemical compound MAL hydrochloride (“MAL”), which was patented and received FDA approval to treat precancerous cell growths on the skin

The most important factor in determining whether an exclusive license transfers sufficient rights to render the licensee the owner of the patent is the nature and scope of the licensor’s retained right to sue accused infringers

Winston & Strawn LLP
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USA
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May 18 2010

The patents-in-suit disclosed and claimed cochlear implants and related technologies used to improve hearing

Laboratory Corporation of America Holdings v. Metabolite Laboratories, Inc

Winston & Strawn LLP
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USA
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March 16 2010

When infringement is not at issue, a lawsuit for breach of know-how and patent license agreement does not arise under patent law

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Boehringer Ingelheim International GmbH v Barr Laboratories, Inc

Therasense, Inc v Becton, Dickinson and Co

For purposes of determining patent term extension under 35 U.S.C 156, an enantiomer has consistently been recognized, by the FDA and the PTO, as a different “drug product” from its racemate

Therasense, Inc v Becton, Dickinson and Co

Novo Nordisk AS v Caraco Pharm. Labs., Ltd

In determining patent term extensions under 35 U.S.C. 156, the statutory term “active ingredient” means the product, not the active moiety of the product, that is present in the approved drug

The most important factor in determining whether an exclusive license transfers sufficient rights to render the licensee the owner of the patent is the nature and scope of the licensor’s retained right to sue accused infringers

Laboratory Corporation of America Holdings v. Metabolite Laboratories, Inc

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