Blocking Patents in Litigation After Acorda: What’s Acorda’s Impact Inside and Outside of Pharma?
Recorded On: 02/20/2020
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In its 2018 Acorda v. Roxane decision, the Federal Circuit addressed in detail the blocking patent doctrine, under which the potential deterrent effect of an earlier patent on subsequent innovation can discount or negate objective indicia of nonobviousness pertaining to a later invention. The decision was viewed as a threatening broadening of the doctrine by many in the pharmaceutical industry, where the doctrine developed in litigation.
Last fall, the Supreme Court denied the petition for certiorari in the case. These two webinars will examine the impact of Acorda both within the pharma industry and without. The language of the decision leads some experts to believe the blocking patent doctrine enunciated in Acorda is applicable to any technology, and that the lengthy “Acorda factors” will soon join elder siblings like the Graham and Georgia-Pacific factors in patent lexicography.
Depending on how courts react, Acorda raises many issues for patent prosecutors, notably how to protect inventions that represent an incremental improvement over existing patents.
On Thurs Feb. 20 the first part of this series, Blocking Patents in Litigation, will feature a panel with an in-house counsel at a global tech company and two veteran patent litigators. They will analyze whether Acorda is a game changer in Hatch-Waxman litigation; whether the lesser role of secondary considerations will relegate Acorda to the sidelines in high tech patent litigation; and how the fact-specific inquiry required by Acorda will likely play out with discovery, expert testimony, and questions about the burden of proof.
Elaine Blais, Goodwin Procter
David Manspeizer, Squire Patton Boggs
Frank Nuzzi, Siemens
is a patent litigator and head of the Litigation Department in the Boston office of Goodwin Procter. An expert in biosimilar litigation, Elaine has handled numerous patent infringement lawsuits in federal courts nationwide involving diverse areas of technology including pharmaceutical products, biosimilars, secure financial transactions, semiconductor manufacturing tools, and consumer products
Squire Patton Boggs
a partner at Squire Patton Boggs, has more than 25 years of experience counseling and representing industry-leading global pharmaceutical and biotechnology companies in complex patent litigation. He was head of IP at Wyeth from 2002 until its acquisition by Pfizer in 2009.
is Senior Intellectual Property Counsel, IP Litigation, for Siemens Corporation, located in Iselin, New Jersey. He manages simple and complex U.S. patent litigation for Siemens. Prior to joining Siemens, Frank was in the litigation department of Clifford Chance.