#4 -- Gene Patenting
Debate Rages On
Gene
patenting has been a hotly debated topic for at least the past three
years. Only two days after Patent Docs began posting new content,
Chicago-Kent College of Professor of Law Lori Andrews and the late Michael
Critchton published an article in the November 11, 2006 issue of Parade magazine, in which the two
advocated for a Genetic Bill of Rights that would have included a prohibition
on gene patents (see "Gene
Patenting in the News Again"). In response, Patent Docs author Dr. Kevin Noonan countered with an article refuting
the factual misstatements in the Andrew-Critchton article (see "In Support of Gene Patents"). In February 2007, Rep. Xavier Becerra
(D-CA) grabbed the anti-gene patent baton when he introduced a bill (H.R. 977)
in the House that would have prohibited patents from being granted for "a
nucleotide sequence, or its functions or correlations, or the naturally
occurring products it specifies" (see "The Continuing Threat to Human
Gene Patenting").
•
"Science Progress Article Examines Impact of Gene Patents on Research,"
December 21, 2009
•
"Gene Patenting Debate Continues - Round Three," December 17, 2009
•
"BRCA Patent Suit to Continue in Southern District of New York,"
November 2, 2009
•
"Empirical Research Fails to Support Gene Patenting Ban," October 22,
2009
•
"The Tragedy of a Bad Idea," August 25, 2009
•
"Gene Patenting Debate Continues - Round Two," August 4, 2009
•
"The Unwanted Consequences of Banning Gene Patenting," June 16, 2009
•
"Falsehoods, Distortions and Outright Lies in the Gene Patenting Debate,"
June 15, 2009
•
"Gene Patenting Debate Continues," June 9, 2009
•
"Association for Molecular Pathology v. U.S. Patent and Trademark Office,"
May 17, 2009
•
"Court Report: Special Edition," May 13, 2009
•
"BIO IP Policy Briefing," May 11, 2009
•
"Gene Patenting and the Wisdom of Judge Lourie," April 12, 2009
•
"The Effects of Intellectual Property Protection on Agricultural Research:
Patents Are Not The Problem," February 3, 2009
•
"Newsweek Joins the Anti-patent Bandwagon," January 26, 2009
On
April 3rd, the Federal Circuit issued its decision in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., reversing the
District Court's denial of Lilly's motion for JMOL in view of a jury verdict of
infringement and validity of the asserted claims, and affirming the District
Court's ruling that Lilly failed to establish the affirmative defense of
inequitable conduct. Ariad
Pharmaceuticals filed a petition for a panel rehearing of that decision in
June, and the Federal Circuit determined in August that the appeal warranted en banc consideration. The CAFC's en banc order presented two questions: whether 35 U.S.C. § 112, first paragraph, contains a written
description requirement separate from an enablement requirement, and if so,
what the scope and purpose of that requirement is.
Armed
with the parties' principal briefs, Ariad's reply brief, and twenty-five amicus briefs, the Federal Circuit heard
oral argument on December 7th. By
our count, nineteen of the twenty-five amicus
briefs supported Defendant-Appellant-Respondent Eli Lilly & Co. and/or judgment
of affirmance and six briefs supported neither party. Patent Docs provided summaries of both principal briefs, the
reply brief, and fifteen of the amicus
briefs (see links below). Regardless of the en banc panel's decision, the Ariad
appeal is almost certain to make next year's list of top stories.
•
"Ariad v. Lilly: Ariad's Reply Brief," December 10, 2009
•
"Ariad v. Lilly: Oral Argument," December 9, 2009
•
"Amicus Briefs in Ariad v. Lilly: Regents of University of California et
al.," December 6, 2009
•
"Amicus Briefs in Ariad v. Lilly: Briefs by Companies," December 6,
2009
•
"Amicus Briefs in Ariad v. Lilly: American Intellectual Property Law
Association," December 1, 2009
•
"Amicus Briefs in Ariad v. Lilly: Federal Circuit Bar Association,"
November 29, 2009
•
"Amicus Briefs in Ariad v. Lilly: Intellectual Property Owners
Association," November 25, 2009
•
"Amicus Briefs in Ariad v. Lilly: GlaxoSmithKline," November 24, 2009
•
"Amicus Briefs in Ariad v. Lilly: United States," November 23, 2009
•
"Amicus Briefs in Ariad v. Lilly: Google, Verizon Communications Inc. and
Cisco Systems, Inc.," November 22, 2009
•
"Amicus Briefs in Ariad v. Lilly: Professor Christopher Holman,"
November 19, 2009
•
"Lilly Files Principal Brief for Ariad v. Lilly Rehearing En Banc,"
November 16, 2009
•
"Next Up: Ariad v. Lilly Rehearing En Banc," November 10, 2009
•
"Federal Circuit Grants En Banc Review in Ariad v. Lilly," August 21,
2009
•
"Ariad Files Petition for Rehearing in Ariad v. Lilly," June 3, 2009
•
"Amgen, Inc. v. Ariad Pharmaceuticals, Inc. (Fed. Cir. 2009)," June
1, 2009
•
"Ariad Decision Voids Attempt to Use Broad Claiming to Avoid the Written
Description Requirement," April 14, 2009
•
"Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co. (Fed. Cir. 2009),"
April 6, 2009
#2 - USPTO Content with
Dismissal in Tafas v. Doll Despite
Federal Circuit Win
The
Tafas/GSK case (and the claims and
continuations that are at the heart of the case) have, not surprisingly, dominated
our top stories lists for each of the past three years. Last year, the decision by Judge James Cacheris
of the District Court for the Eastern District of Virginia to permanently
enjoin the claims and continuations rules, and the USPTO's appeal of this
injunction, took the top spot on our list (see
"Top Stories of 2008: #5 to #1"). And stories related to the new claims
and continuations rules took the #3 (promulgation of new rules), #2 (USPTO
clarification of new rules), and #1 (new rules preliminarily enjoined) spots on
our 2007 list of top stories (see
"Top Stories of 2007: #5 to #1"). The Federal Circuit's decision in the Tafas v. Doll appeal and the USPTO's decision to rescind the rules and withdraw the appeal claim the #2 spot on this year's list.
•
"Dr. Tafas Files Reply to USPTO/GSK Motion to Dismiss Appeal and Vacate
District Court Judgment," October 20, 2009
•
"Response to Rescission of Claims and Continuations Rules," October
8, 2009
•
"'New Rules' Officially Rescinded," October 8, 2009
•
"Federal Circuit Grants Stay in Tafas v. Kappos," August 21, 2009
•
"Could the "New Rules" Nightmare Finally Be Over?" July 27,
2009
•
"Federal Circuit Grants En Banc Review in Tafas v. Doll," July 6,
2009
•
"GSK Files Petition for Rehearing in Tafas v. Doll," June 4, 2009
•
"Tafas Files Petition for Rehearing in Tafas v. Doll," June 3, 2009
•
"USPTO Will Not Enforce New Claims and Continuation Rules . . . For Now,"
March 25, 2009
•
"Tafas v. Doll (Fed. Cir. 2009)," March 22, 2009
• "Anyone Remember What These 'New Rules' Are All About?"
March 22, 2009
•
"Federal Circuit Issues Decision in Tafas v. Doll," March 20, 2009
#1 -- Biotech/Pharma
Industry Tries to Recover from Great Recession
•
"NVCA Study Shows Increase in Third Quarter Venture Funding," October
23, 2009
•
"Biotech/Pharma IPO Binge," October 9, 2009
•
"BIO Top Brass Meet the Press," September 9, 2009
•
"VC CEO Believes Biotech Is Entering Golden Era," September 6, 2009
•
"Biotech/Pharma Financing Improving, R&D Spending Up," August 31,
2009
•
"Investors Saw Biotech Rebound Coming," August 17, 2009
•
"Is Biotech/Pharma Beginning to Bounce Back?" August 12, 2009
• "Bristol-Myers Squibb to Acquire Medarex," July 23, 2009
•
"Docs at BIO: "Perfect Storm" Super Session," May 28, 2009
•
"Docs at BIO: Steve Burrill's State of the Biotechnology Industry Report
2009," May 19, 2009
•
"Docs at BIO: Ernst & Young Hosts Super Session Addressing Financial
Performance of Biotech Industry," May 19, 2009
•
"First Quarter Venture Capital Funding at 12-Year Low," April 23,
2009
•
"Roche and Genentech Agree on Terms of Merger," March 13, 2009
• "Merck and Schering-Plough to Merge," March 9, 2009
•
"BIO Meets the Press," February 26, 2009
• "Bio-irony: Biotech Turns a Profit in 2008," February 26, 2009
•
"The Future of Biotechnology," February 17, 2009
•
"NVCA Study Shows Decline in 2008 Investment; BIO Study Predicts Biotech
Rebound in 2009," February 16, 2009
•
"Pfizer Expected to Announce Wyeth Acquisition on Monday," January
25, 2009
•
"PatentBuddy.com Examines Impact of Economic Recession on Patent Practice,"
January 13, 2009
Meh the Ariad case is a joke at this point. To be truthful, it always was.
It doesn't really deserve to be on the list.
But it was really funny to go to the oral arguments.
Posted by: 6 | January 05, 2010 at 02:04 PM