Patent Valuation, Monetization and Investments

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Markman Advisors Patent Blog

by Zachary Silbersher

Did Corcept and Teva tell the Court they are about to settle the Korlym patent dispute?

On January 10, counsel for Corcept ($CORT) filed a letter with the Court in the pending patent litigation against Teva ($TEVA) over its proposed generic for Korlym®.  (See Dkt. 49).  Within that letter, Corcept requested an extension of one week to respond to Teva’s Answer to the Amended Complaint.  Corcept’s letter further stated that the “parties are currently discussing a potential agreement that would eliminate the need for Corcept to respond to Teva’s Answer . . . .”  Is that potential “agreement” a resolution to the litigation?

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Why Apple's Damages Dodge Matters for Patent Values...

Sophisticated defendants like Apple have three chances (jury, judge, appeals court) to “win” on damages, or to at least allow the litigation process to set the appropriate settlement range for any patent claim. It is a gauntlet for a patent owner to run, but it also confirms that any patent valuation that is not conducted through a litigation lens is likely as worthless as a big-ticket jury verdict based on erroneous expert testimony.

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Will Celgene and Dr. Reddy’s settle the Revlimid dispute now that Bristol Myers is at the table?

Celgene ($CELG) has announced plans to be acquired by Bristol Meyers Squibb ($BMY).  A settlement conference is scheduled in the Hatch-Waxman patent case between Celgene and Dr. Reddy’s on January 10, 2019.  Now that Bristol Meyers is at the table, will the parties be able to reach a settlement that couldn’t be reached before?

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Does Alice require fact questions or not? The Federal Circuit appears split.

Earlier this year, the Federal Circuit issued two precedential decisions that were predicted to stem the tide of early dismissals based upon Alice motions.  The cases were  Berkheimer v. HP and Aatrix Software v. Green Shades Software, and there were both deemed precedential by the Federal Circuit.  A recent concurrence at the Federal Circuit, however, shows that the Court may be splitting over the rationale underpinning Berkheimer and Aatrix, and that split may be heading for the Supreme Court. 

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Losing an IPR: Double The Pain

No longer should patent owners assume that the only pain of losing an IPR is seeing their patent cancelled. If there is a pending companion case in court, the likelihood that a losing IPR effort could lead to a larger award of attorney’s fees must also be taken into account. Put another way, the chances of a patent owner feeling double the pain because of an IPR filing have just gone up.

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The Federal Circuit sends a message about attorneys’ fees in Spineology v. Wright Medical

A recent precedential decision from the Federal Circuit sheds important light on how the Court views attorneys fees in patent cases.

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Does Moderna Therapeutics’ pipeline depend upon its patent dispute with Arbutus Biopharma over mRNA delivery?

Moderna is currently embroiled in an intellectual-property dispute that may be material to its long-term profits, regardless of which of the products in its pipeline eventually succeed.  At least one company, Arbutus Biopharma, has already claimed that Moderna’s tech uses its mRNA delivery technology.  Two pending patent disputes may decide whether Arbutus’ patents are a roadblock to Moderna’s revenue.

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Is Boehringer Ingelheim planning to launch its Humira biosimilar at-risk?

Boehringer Ingelheim has been one of the lone holdouts in AbbVie’s ($ABBV) campaign to delay biosimilar competition against Humira® until 2023.  To date, AbbVie has settled with almost all proposed biosimilars for entry dates in 2023.  Is Boehringer going to launch at-risk?

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What do the Court’s December 4 rulings mean for MorphoSys' Darzalex patent case?

Earlier this week, we blogged about the series of pending summary judgment motions in MorphoSys’ ($MOR) lawsuit accusing Janssen’s ($JNJ) Darzalex® of infringing its patents.  The Court heard oral argument on December 3.  The transcript of that hearing is not currently publicly available.  The Court, however, did issue oral rulings at the end of the hearing that hit the docket on December 4.  What do the rulings mean?

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Will MorphoSys’ Darzalex patent case against Janssen make it to trial, or be stopped at summary judgment?

The Darzalex® patent case commenced by MorphoSys against Janssen is headed towards trial.  Before that, however, the parties recently filed a series of summary judgment motions, and on December 3, 2018, the Court heard oral argument.  Will the Court moot the trial by granting Janssen’s motions to invalidate the patents?

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What are the takeaways from Unified Patents v. Realtime, the PTAB’s first post-AIT RPI decision?

The PTAB has issued its first post-AIT decision, Unified Patents, Inc. v. Realtime Adaptive Streaming, LLC.  In Realtime, the Patent Owner sought to defeat institution by arguing that Unified has run afoul of the AIT decision by failing to identify all RPIs, namely, its members.  The PTAB disagreed and instituted Unified’s IPR.  (The institution decision was entered in October, but the redacted decision issued on November 27, 2018).  How do we square the AIT decision with the Realtime decision?  Will third-party filers, such as Unified and RPX, no longer face RPI issues?

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The CAFC Curbs Personal Jurisdiction For Declaratory Judgment Actions.

A recent precedential case by the Federal Circuit, Maxchief Investments, Ltd. v. Wok & Pan, Ind., Inc., shows that the risk of a DJ action resulting from a pre-suit notice letter may be less troubling for a different reason than the one that preceded TC Heartland—namely, personal jurisdiction.

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A very important CAFC decision for induced infringement: Enplas Display v. Seoul Semiconductor

Today, the Federal Circuit issued an important precedential decision for induced infringement.  The case, Enplas Display Device Corp. v. Seoul Semiconductor Co., Ltd., Case No. 2016-2599 (Fed. Cir. Nov. 19, 2018), indicates that defendants that manufacture and sell components abroad cannot so easily evade induced infringement by claiming ignorance that their products end up within the U.S. market. 

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Why Can't Cisco Stop An Arista Founder From Attacking His Own Patents?

While this decision hurts Cisco’s enforcement efforts, it also suggests that companies that own patents that have been assigned to them by former employees must be careful going forward. Because the inventors of those patents could file IPR petitions to invalidate their own patents. Sophisticated companies should research whether they can contract with departing employees for non-aggression clauses that would preclude filing IPRs against patents owned by the company. As the Federal Circuit has reminded us, with IPRs almost no patent owner is safe…

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When did Mylan agree to launch its Herceptin biosimilar?

Mylan’s biosimilar for Herceptin® has FDA approval since December 2017.  Several months earlier, in March 2017, Mylan reached a global settlement with Roche and Genentech regarding their patents covering the drug.  The terms of the settlement have not been made public, which raises the question – when did Mylan agree to launch? 

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Why would acting Attorney General Matt Whitaker’s affiliated invention business, World Patent Marketing, need ex-Israeli Special Ops for security?

The day after the midterms, Trump fired AG Sessions and tapped Mr. Sessions’ chief-of-staff, Matthew G. Whitaker, to serve in the role as acting Attorney General.  Shortly thereafter, the press started to report that Mr. Whitaker was previously an advisory board member for a company known as, World Patent Marketing, before it closed shop following a consent decree with the FTC.  It is worth taking a moment to highlight the need for increased IP literacy.

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If Hatch-Waxman cases are governed by TC Heartland, will that lead to “generic friendly” districts?

Mylan ($MYL) recently prevailed on a motion to dismiss for improper venue in a pending Hatch-Waxman case for the drug Eliquis®.  Mylan successfully argued that Delaware was an improper venue under the recently test for venue in patent cases enunciated by the Supreme Court in TC Heartland.  What are the implications of TC Heartland governing venue in all Hatch-Waxman cases?  Will it lead to “generic friendly” judicial districts?

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Is every individual inventor a patent troll?

Unified Patents recently released statistics on patent lawsuit filings.  The statistics show patent filings to be trending downwards fairly significantly from a peak in 2015.  Yet, the statistics also show that the individual inventor, asserting his or her own patent, is behind many patent suits.  Does that matter? 

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