Copaxone patents invalidated by the US Patent Trial and Appeal Board (PTAB)

August 27, 2016
copaxone 2

Following an inter-partes review brought by Mylan against two patents protecting Teva Pharmaceutical Industries’ Copaxone, a drug for treating multiple sclerosis, the US Patent Trial and Appeal Board (PTAB) has invalidated all claims of the ‘250 and ‘413 patents for double-dose 40 mg Copaxone (glatiramer acetate injection) multiple sclerosis treatment. However, on 24 August 2016, TEVA announced that it plans to appeal to the US Court of Appeals for the Federal Circuit.

Erez Vigodman, president and CEO of Teva, said: “We remain confident in the strength of our intellectual property surrounding Copaxone.”

“We are prepared to defend the full suite of our intellectual property through the PTAB and US courts regardless of the time required.”

copaxone 3“We believe patients, physicians and payers will continue to value the efficacy, safety and tolerability of Copaxone and that it will remain a proprietary, global market-leading product for the reduction of relapses in RRMS patients.”

Teva have also announced that the PTAB had declined a request for a post-grant review on an additional Copaxone patent.

Copaxone represents 20% of TEVA’s income and the invalidation sent shares plummeting by 3%.


Goodness, Gracious…

August 8, 2016

family jewels

 AC/DC – Big Balls Lyrics | MetroLyrics

The Lanham Act forbids the registration of trademarks in the US that consist of immoral or scandalous matter, or that disparage people, institutions, beliefs or national symbols. Other countries have similar rules.

Back in 2014 a Norwegian company applied for a trademark for underpants that are particularly comfortable due to providing cooling of the groin area. The USPTO refused the mark on the grounds of vulgarity since they considered that the word “balls” could relate to male genitalia. In contrast, the European Patent Office allowed the mark.

Apparently Comfyballs’s underwear incorporates a design called PackageFront, which claims to increase comfort by “reducing heat transfer and restricting movement”.  One wonders why reducing heat transfer is a good idea. I always thought that testes hung in an external scrotum to keep them cool and so artificial fibers and the like, with reduced heat transfer (insulating properties) could adversely affect  sperm generation.

Apparently in politically correct circles gender is now apparently considered to be a matter of personal choice rather than physiology, one could argue that there is no longer a link between testicles and men. More seriously, the mark could be considered descriptive and thus generic. That as may be, in the latest development of this exciting saga, the applicants have managed to have the mark allowed for women’s underwear. However, why women would choose knickers branded as Comfyballs is beyond me.

Seems like a load of #$%^^&$?!


David Kappos

May 10, 2016

200px-David_Kappos_official_photo

Kim Lindy has managed to persuade David Kappos to speak at the IPR’s Fourth Annual Best Practices in Intellectual Property conference.

David, who I have met, is a pleasant fellow who, as can be seen from this photograph, bears an uncanny resemblance to Howard Poliner, the IP Law draftsman at the Israel Ministry of Justice.

With no disrespect to Howard or to the Israel Patent Office, I think that David Kappos, who served as the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) from 2009 to 2013 is possibly even more eminent.  Prior to being confirmed to this post by the U.S. Senate on August 7, 2009, Kappos was the vice president and assistant general counsel, intellectual property law, for IBM Corporation. Nowadays David who works for the law firm of Cravath, Swaine & Moore, handles corporate mergers and acquisitions and litigation in the private section.

There was the rather erroneously called American Invents Act and there has been a series of important Supreme Court rulings that have resulted in the  US Patent Law and the USPTO undergoing major changes, particularly with regard to statutory patentable matter, with patents directed to genes, business method methods and software patents becoming more difficult to obtain and enforce. To my mind, the Supreme Court has clipped the wings of the Federal Circle Court of Appeal and I am not sure that their eminences necessarily knew what they were doing.  In other respects, US patent Law has become closer to that of the rest of the world.

I have no doubt that David Kappos will have a lot of insights into what is happening and where it might end and I applaud Kim for bringing him over. The conference is at an international level but is held here in Israel, and though I hate coommuting to Tel Aviv, it is much more convenient than Orlando or even Milan, and this conference is directed to practical issues.  For reports of previous Best Practices in IP Conferences see here, here andhere. For more details of this conference and to register, contact Kim Lindy.


Google and Waze Sued By Israeli Inventor

February 25, 2016

Waze

Waze is an Israeli company that developed an Application (App) for helping drivers choose optimal routes and for estimating arrival times. It uses crowd sourcing to detect and help avoid congestion. Google bought Waze in $1.15 billion back in 2013.

Now another Israeli company, ‎ ‎Makor Issues And Rights Ltd, is asserting two patents against Google: US 6,480,783 and US 6,615,130 both by David Myr.

Makor Issues And Rights Ltd have filed a patent infringement suit in the Federal Court of Delaware. They claim that Google Maps directly infringes the patents.


PCT Filing Fees to Drop in January 2016

December 17, 2015

wipo_pct_logo270

Israel applicants of the PCT can select the USPTO, the EPO or the ILPO for conducting International Searches and preliminary examinations, i.e. for generating the ISR and IPER and chapter 2.

As of January 1, 2016, most of the PCT prices will drop. For example, the International filing fee will drop from $1384 to $1363. That price is good for applications of up to 30 pages including forms and Figures. Additional pages currently cost a further $16, but this will drop $1 a page to $15 a page.

The International Search fees via the EPO will drop from the current $2125 to $2097. Preliminary Examination fees (for the IPER) will drop from $208 to $205 if the USPTO is used. The IPER fee via EPO will drop from 191 Euros to a mere 183 Euros.Backing the trend however, the Israel Patent Office (ILPO) will now charge 794 Shekels instead of 766 Shekels.

Users of PCT Safe save $205 per application, and if they file electronically, the discount is $307.

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PC Tea

Extraordinary value for money is our PCTea bags which take away the stress of international filing. These are a blend of organic green tea and organic spearmint (nana) and are worth about $10 a box. Clients using our stress free PCT services are welcome to a free box.


J-Date swipes at J-Swipe

August 11, 2015

matchmaker
There are well-defined groups of Jewish singles looking for partners. In traditional society, the match-maker paired up potential partners, and made his/her living from so-doing. In the wider society, friends and acquaintances suggested that people who seemed compatible should meet. Depending on the perceptiveness of the match-maker, the date could be very successful or very tedious for both parties.
In 1997 J-Date offered a computerized match-making service to Jews. Apparently their questionnaires enable people to provide more details of who they are and what they are looking for. J-Date quickly grew to become a leading service provider.
If 1997 was the beginning of the Internet revolution, nearly 20 years later things have changed. J-Swipe is an application that lets those interested in dating discover the proximity of potentially suitable partners, to find out a little more about them, and to contact those of interest. It is apparently a circumcised ritually immersed version of Tinder, a similar application that is less tribal. Apparently J-Swipe is the #1 Jewish dating app with users in over 70 countries. They also claim 375,000+ JSwipe users from across the world (which compares nicely with the number of times this blog has been accessed, but my statistic includes repeat views, and the blog has been going for longer).
Both J-Date and J-Swipe target the same audience, i.e. single Jews, and offer similar services. So J-Date sued J-Swipe and also connected hosting sites and the like, threatening to sue them.
J-Date claims patent infringement and trademark infringement.
Their patent is US 5,950,200 to Sudai and Blumberg titled ” Method and apparatus for detection of reciprocal interests or feelings and subsequent notification”
The independent method claim is

1. A method that notifies people that they feel reciprocal interest for each other, comprising the steps, performed by a processor of a data processing system having a memory, of:
receiving input from a first user indicating a user ID of a specific person in whom the first user has an interest, the first user already being aware of the existence of the person whose ID they entered;
receiving input from a second user indicating a user ID of a specific person in whom the second user has an interest, the second user already being aware of the existence of the person whose ID they entered;
determining whether the user ID of the person in whom the first user has an interest matches a user ID of the second user;
determining whether the user ID of the person in whom the second user has an interest matches a user ID of the first user; and
if and only if a match occurs in both of the determining steps, notifying the first user and the second user that a match has occurred.

There is an independent apparatus claim as well:

28. An apparatus that notifies people that they feel reciprocal interest for each other, comprising:
a first input portion, configured to receive input from a first user indicating a user ID of a specific person in whom the first user has an interest, the first user already being aware of the existence of the person whose ID they entered;
a second input portion, configured to receive input from a second user indicating a user ID of a specific person in whom the second user has an interest, the second user already being aware of the existence of the person whose ID they entered;
a first determining portion, coupled to the first and second input portions, configured to determine whether the user ID of the person in whom the first user has an interest matches a user ID of the second user;
a first determining portion, coupled to the first and second input portions, configured to determine whether the user ID of the person in whom the second user has an interest matches a user ID of the first user; and
a notifying portion, coupled to the first and second determining portions, configured to notify the first user and the second user if and only if the first and second determining portions have detected a match.

There is also a means claim and a software claim.

Back in 1999 such patents issued. Nowadays they don’t.

The trouble is, as VOX put it, JDate claims to own the concept of connecting 2 people based on mutual attraction.

Now, J-Date denies that it against market competition:
“This is not about us discouraging market competition,” Michael Egan, CEO of the company behind JDate, wrote to the New York Observer’s Brady Dale. “Our case against JSwipe is about their theft of our technology.” I am not convinced.
Having an issued patent, there is a rebuttable assumption of validity and they cannot be accused of bad faith in attempting to assert their patent against infringers. However, I doubt that the patent would be upheld in court.

When considering validity, US courts are governed by current case law in their interpretation of concepts such as patentable subject matter, novelty and obviousness. Many patents issued at the turn of the millenium will not stand up in court.

In addition to patents, J-Date also claims trademark infringement. J-Date argues that J-Swipe infringes their mark. Back when I was a student in England, college Jewish Societies were known as J-Socs and presumably still are. The left leaning America-Israel pressure group J-Street uses a J for the same reason. The J indicates Jewish. It seems unlikely that the courts would recognize an individual company having rights in the letter J for dating services.
I doubt that the patent would stand up in court as most of the computerized service patents are voidable in light of recent decisions, and the patent in question doesn’t seem very exciting. I also doubt that the argument of trademark infringement will stand up. The thing is that J-Date have deep pockets and see a threat to their market dominance. They are suing because they can.

Yentl is using behavior more appropriate to a troll. Still all is fair in the business of love.

Matchmaker – Fiddler on the Roof (1971)


A lack of uniformity in unity of invention

July 20, 2015
UNity
As Israel’s leading IP blogger, I regularly get emails and phone calls from students, inventors, academics and professionals, both from Israel and abroad, about various aspects of patent and trademark practice.
Most recently, I received an interesting question on what constitutes unity of invention. The question is rather better than the answer.
All regimes require unity of invention. One is entitled to protect one invention in a single patent. There are separate issues regarding double patenting, i.e. protecting the same invention with more than one patent, but, how is a single invention determined?
The practice relates to claims and differs in different jurisdictions.
In the US, unity seems to depend on the main class that the Examiner classifies the invention as and has to search when evaluating novelty and non-obviousness. One can file up to three independent claims (regardless of type) for the same basic price. However, there is no limit on the number of independent claims in the same class, since the searching requires trawling the same material.
US Examiners love to issue restriction orders due to multiple inventions, and sometimes do this based on the figures. They may require a restriction to a product or process, but may also require an election of a preferred species where different figures show different embodiments. However, once a structure is allowed, corresponding and withdrawn method claims can be allowed and rejoined so long as the method requires using the allowed apparatus.
In Europe, the theory relates to the inventive concept to be searched. In practice one is entitled to one independent method claim and one independent apparatus claim. Anything else and the claims will be reject as ambiguous.
It will be appreciated therefore, that the same claims may be considered as having unity in US but not in Europe and vice-versus.  Indeed, with two independent method claims and two independent structure claims each with minor differences, I’d expect the USPTO examiner to want inventor to elect either method claims or structure claims, and EPO examiner to want one of each.
In Israel (and there is no logic to this – it was a circular from Previous Commissioner, Meir Noam), one is entitled for up to two claims of each type. this can be method, product, system, gene sequence (now no longer patentable anywhere else).
Examiners will require restrictions on unity considerations, but there is no clear definition of unity. If a foreign patent office allows a set of claims one can request allowance under Section 17c and the issue of unity is not a grounds for objection by examiner or in opposition. What this means is that something acceptable in the US or in Europe (or in UK, Austria, Australia and other jurisdictions recognized in Appendix B for purposes of Section 17c) is acceptable in Israel. Since US and Europe have different standards, it will be clear that there is no clear standard in Israel.
See https://blog.ipfactor.co.il/2010/02/03/israel-patent-office-to-allow-no-more-than-two-independent-claims-of-each-type/ for more information.

 


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