Blocking Patents in Prosecution Strategy and Corporate IP Strategy After Acorda
Includes a Live Event on 02/26/2020 at 2:00 PM (EST)
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 Wed Feb. 26, in the second webinar of this series, the panel will include an in-house counsel at a leading medical device company and two veteran patent prosecutors. They will discuss what prosecution strategies will best protect such inventions if they are now more vulnerable, and whether such considerations should now impact corporate IP strategy and budgets.
Adriana Burgy, Finnegan
Stephen Durant, Schwegman Lundberg & Woessner
Jeffrey Hohenshell, Medtronic
is a partner at Finnegan. Her practice focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring patent portfolio strategy and development, with an eye towards litigation.
Schwegman Lundberg & Woessner
is a registered patent attorney and a principal at Schwegman Lundberg & Woessner. He has drafted and prosecuted patents in a wide range of software and computer technologies. His practice is devoted to developing IP portfolios aligned with business goals and with enforcement and litigation strategy. Earlier, he was a partner at Wilson Sonsini and Morrison & Foerster.
is a senior patent attorney at Medtronic. An experienced patent prosecutor and strategist, he has had success invalidating for double patenting several patents covering patient-monitoring systems that were asserted against Medtronic.