Patent Valuation, Monetization and Investments

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Markman Advisors Patent Blog

by Zachary Silbersher

How will the CAFC’s Valeant v. Mylan venue case change the landscape of pharmaceutical patent litigation?

On November 5, 2020, the Federal Circuit issued a precedential decision, Vaeleant Pharmaceuticals v. Mylan Pharmaceuticals, that is likely to have a significant impact on the litigation of Hatch-Waxman cases—including the possible development of “generic-friendly” districts. In short, if this decision stands, the future of patent pharma litigation against multiple generics for the same drug will likely be spread out, difficult to consolidate, subject to multiple forums determining in parallel common issues related to infringement and invalidity. Costs for brands are likely to go up along with settlement leverage for generics. Although, exactly who wins and who loses from this decision remains to be seen.

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Can Amarin benefit from the GSK v. Teva decision regarding induced infringement for off-label sales?

Just when you think the Amarin saga to keep out generic competition is over, something else happens. In the latest development, the Federal Circuit issued a precedential decision in an unrelated case (GlaxoSmithKline v. Teva) that suggests that a generic could potentially be liable for inducing infringement of a patented indication, even though that indication has been carved out of the generic’s label. Will this decision benefit Amarin?

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Why Investors Need to Prepare for Disclosure of Diligence Materials in Patent Cases...

The takeaways for investors and IP owners seeking investment are clear. It is not safe to assume that a common interest exists during the investment procurement stage, especially as it relates to disclosure of privileged information to potential investors. As a result, any presentations containing privileged information made to potential investors — such as on the strength of the IP, or the potential damages at issue in a case — run the risk of being deemed discoverable.

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What Investors Need to Know About the ABA's Litigation Finance Guidance...

Ultimately, the true best practices when it comes to litigation funding of patent cases are those that best align interests between all the parties to the deal, while also respecting the boundaries of the attorney-client relationship and the ethical obligations of the lawyers involved. Moreover, interests must be aligned to prevent the litigation finance arrangement from hampering the prosecution of the case on the merits, or from serving as a hindrance (rather than aid) to settlement. Done right, litigation finance can be a critical component for a successful patent enforcement case or campaign.

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Why Should Investors Care About Apple's Lawsuit Against Koss?

For now, it is clear that these are just the opening salvos in what — absent settlement — is shaping up as a major patent war between two well-regarded names in the headphone/earbud space. Both Apple and Koss investors would do well to monitor developments in the two Apple/Koss cases, as well as any other cases involving Koss’ patents.

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What Investors Need to Know About Covid-19's Impact on the PTAB....

In the words of Lex Machina: “PTAB continued its trial flow in an effective, timely fashion. It has been reliable throughout this spring and summer, causing some parties to choose PTAB as a solution for stalled federal district court cases.” Put another way, the PTAB has risen to the Covid-19 challenge with aplomb. It is not a surprise, therefore, that the PTAB continues as a popular destination for patent disputes.

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Is Moderna’s COVID-19 vaccine using Arbutus Biopharma’s patents?

We previously blogged about Moderna Therapeutics’ ($MRNA) ongoing patent dispute with Arbutus Biopharma ($ABUS). On July 23, 2020, Arbutus prevailed in Moderna’s third IPR challenge to one of its patents, the ‘069 patent. Given that Moderna’s COVID-19 vaccine candidate is currently one of the most promising, the question is, will Moderna’s vaccine infringe Arbutus’ patents?

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Which patents cover the COVID-19 vaccine candidates for Moderna, AstraZeneca, J&J and Novovax?

A number of companies have announced candidates for a COVID-19 vaccine, including Moderna Therapeutics ($MRNA), AstraZeneca ($AZN), Johnson & Johnson ($JNJ) and Novovax ($NVAX). We looked into the existing landscape of patents that cover many of the existing candidates.

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Is Google a Patent Troll?

A recent post on this blog by Gaston Kroub discussed the ongoing patent war between Sonos and Google. The war started when Sonos accused Google of stealing its technology and infringing its patents. Since then, the war has broadened to multiple fronts. In one interesting twist, Google commenced its suit against Sonos asserting its own patents. Gaston’s commentary provides some useful insights for why Google would do this from strategic perspective. But in this post, we raise another question: is Google a patent troll?

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Amarin: What does Amarin’s reply appellate brief say?

Amarin’s appeal of the district court’s decision invalidating the Marine patents is now fully briefed. Amarin’s reply brief is strong, but does it tip the odds in favor of Amarin prevailing on the appeal?

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Why was the Humira “patent thicket” antitrust case against AbbVie dismissed?

When does a pile of sand become a heap? When is a portfolio of patents too many patents? Can using too many patents to compel generics to take a later entry date turn into monopolistic conduct? These questions lurk the heart of the antitrust litigation brought by buyers of the blockbuster drug, Humira®, against its manufacturer, AbbVie ($ABBV). The case is currently pending within the Northern District of Illinois (In Re: Humira (Adalimumab) Antitrust Litigation, No. 19-cv-1873 (N.D. Ill.)). We previously blogged about related allegations before the case was filed when Boehringer Ingelheim raised them within its biosimilar litigation against AbbVie. On June 8, 2020, the Illinois federal court dismissed the antitrust action pursuant to AbbVie’s motion to dismiss. What are the takeaways from the case?

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Section 285 attorneys’ fees are not available for pure IPRs. How much does that matter?

On June 4, the Federal Circuit issued a precedential decision holding that § 285 under the Patent Statute is inapplicable for awarding attorneys’ fees to the prevailing party in a proceeding for inter partes review. The case is Amneal Pharmaceuticals, LLC v. Almirall, LLC, Case No. 2020-1106 (Fed. Cir. Jun. 4, 2020). While the Court’s decision dispenses rather cleanly with the possibility of collecting fees for prevailing in an IPR, the Court nonetheless left open the door to collecting fees if the IPR is intimately tied to a pending parallel district court case. How much does that matter?

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The Federal Circuit cannot say who constitutes a real-party-in-interest in an IPR.

In a precedential decision that issued on May 19, ESIP Series 2, LLC v. Puzhen Life USA, LLC, the Federal Circuit confirmed that the Supreme Court’s recent Click-to-Call decision precludes judicial review of decisions by the PTAB concerning real-parties-in-interest.  recent Click-to-Call decision precludes judicial review of decisions by the PTAB concerning real-parties-in-interest.

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Amarin: What does Amarin’s opening appellate brief say?

On May 12, 2020, Amarin ($AMRN) filed its opening appeal brief in its appeal of the decision by the District of Nevada wherein the Honorable Miranda M. Du invalidated six patents that were asserted against prospective generics, Hikma and Dr. Reddy’s. What does the brief say?

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Is the PTAB’s Apple v. Fintiv decision a fair one for IPR petitioners?

The PTAB’s decision in Apple, Inc. v. Fintiv, Inc., Case No. IPR2020-00019 (Paper No. 11) has been designated precedential as of May 5, 2020. The decision outlines the factors that the PTAB will consider when determining whether petitions should be denied under § 314(a) based upon a parallel district court litigation in which the same invalidity arguments have been raised. The case implicates the balance between patent owners and patent challengers, and who carries the heavier load.

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