专利上诉
博钦律师事务所的专利上诉业务处于全美顶尖地位。博钦经常代表高科技和医药行业客户处理各类高风险的,由地区法院、专利审理和上诉委员 (PTAB) 、国际贸易委员会 (ITC) 上诉到联邦巡回上诉法院审理的案件。凭借卓越表现,博钦连续三年被 《Law360》 评为“主导”联邦巡回上诉法院的律师事务所。2019 年,博钦在联邦巡回法院代理案件的胜诉率是 10-1,为各行业的客户在多个方面取得了历史性胜利。
该业务组由杰出的和经验丰富的专利上诉律师率领,包括曾在 2012 到 2018 负责指导大部分涉及美国专利商标局机构的上诉案件的前美国专利商标局律师 Nate Kelley,以及拥有超过 25 年处理知识产权上诉案件经验的美国上诉律师协会成员 Dan Bagatell。团队成员亦包括前联邦巡回上诉法院法官助理,我们深切受益于这些专业人员的卓越才能和真知灼见。
我们的上诉律师与博钦和其他律所的出庭律师协作办案,以清晰的条理,令人信服和法律上有说服力的方式在辩护状和口头辩论中陈述复杂的技术事实。我们以胜诉为核心目标,同时兼顾效率与客户商业目标的达成。
除在联邦巡回上诉法院和最高法院陈述案情之外,我们经常在初审法院、PTAB 和 ITC 审理的关键阶段针对重要问题和动议提供咨询,以便在上诉中获得有利判决。我们还帮助客户撰写陈述重要法律问题的法庭之友简报,准备政策文件推动政府机构和国会进行法律法规的起草和制定,从而使得法律朝着正确的方向发展,并就近期重要的法律动态和即将实施的法律变革提供咨询。据此,我们不仅论证法律应当是什么,并且阐述该法律问题在现实中的实际意义。
News
代理经验
Patent Appeals Experience
St. Regis Mohawk Tribe v. Mylan
Secured a major victory in a precedent-setting case involving tribal sovereign immunity. Allergan transferred patents covering a treatment for chronic dry-eye to the St. Regis Mohawk Tribe so that the Tribe could assert sovereign immunity to inter partes reviews that were instituted at Mylan’s behest. The Federal Circuit agreed with the PTAB that tribal sovereign immunity does not apply when a federal agency reconsiders its own patent grant. The Supreme Court denied certiorari. The matter was named one of the “Biggest Patent Cases of 2018” by Law360, and Managing IP recognized it as a “Patent Impact Case of the Year.”
In re Copaxone & Yeda v. Mylan
Convinced the Federal Circuit to affirm rulings by both the district court and the PTAB that patents covering 40mg three-times-a-week dosing of Teva’s blockbuster multiple sclerosis drug Copaxone® (glatiramer acetate) were invalid for obviousness. The Federal Circuit's decisions put an end to Mylan's long-running battle against Teva and cleared the way for Mylan to market its own generic version of the product rather than waiting until the patents’ expiration in 2030.
Nuvo Pharmaceuticals v. Dr. Reddy’s Laboratories
Convinced the Federal Circuit to reverse a district court’s ruling that two patents contained an adequate written description of the claimed invention. The claims required an amount of an uncoated proton-pump inhibitor effective to raise gastric pH to a certain level, but the Federal Circuit held that the specifications failed to demonstrate that the inventor knew, rather than hoped, that uncoated proton-pump inhibitors would work.
BTG International v. Amneal & Mylan Pharmaceuticals v. Janssen Oncology
Persuaded the PTAB to find all claims of the only Orange Book-listed patent covering Janssen’s Zytiga® (abiraterone acetate) product unpatentable. Demonstrated the obviousness of combining abiraterone with prednisone to treat patients suffering from metastatic castration-resistant prostate cancer. Achieved a second victory in the parallel district court case when the court held the claims invalid after a bench trial. Convinced the district court, the Federal Circuit, and the Supreme Court to deny Janssen’s request for an injunction against generic launch pending appeal, and then persuaded the Federal Circuit to affirm the unpatentability of the claims on the merits.
Cleveland Clinic Foundation v. True Health Diagnostics
Convinced the Federal Circuit to affirm the ineligibility of Cleveland Clinic’s patent claims on methods of detecting elevated levels of a biomarker that correlates with cardiovascular disease. The Federal Circuit held the claims invalid despite Cleveland Clinic’s argument that the PTO’s patent-eligibility guidelines approved the eligibility of similar laboratory-method claims. The win was recognized by Law360 as one of four recent Federal Circuit decisions that patent attorneys need to know.
U.S. Water Services v. Novozymes
Won infringement and non-invalidity verdicts for the plaintiff at trial in a case regarding a patent on reducing fouling during production of ethanol. Then convinced the Federal Circuit to reverse the district court’s post-trial grant of judgment as a matter of law of inherent anticipation.
MACOM Technology Solutions Holdings v. Infineon Technologies
Obtained a preliminary injunction that declared that Infineon’s termination of a patent license agreement was ineffective. Then persuaded the Federal Circuit to affirm the critical aspect of the injunction.
Luminara Worldwide v. Liown Electronics
Convinced the Federal Circuit to reverse a preliminary injunction that barred Liown from supplying artificial flame candles because the asserted patent claim was likely invalid over a prior-art patent.
Digital Media Technologies v. Netflix, Amazon.com & Hulu
Successfully defended the district court’s ruling that Digital Media Technologies patent claims involving digital rights management and encryption of content licenses were patent-ineligible.
Uniloc USA v. Amazon.com, Google, Hulu & Netflix
Successfully defended the district court’s ruling that Uniloc’s patent claims on time-adjustable licenses were ineligible for patenting under section 101.
Vehicle IP v. Cellco Partnership
Defeated claims of infringement of a patent on navigation systems that provide estimated times of arrival and directions to destinations. Convinced the district court to reconsider its construction of a key claim term shortly before trial and to enter judgment of non-infringement. Then persuaded the Federal Circuit to affirm the claim construction.
IPCom v. HTC
Convinced Federal Circuit to affirm the PTO’s ruling that claims to a method of avoiding cellular network overload were unpatentable over prior-art GSM specifications. Also persuaded the Federal Circuit to affirm most of the PTO’s ruling that claims involving handover of cellphones in a cellular telephone network were unpatentable over prior art.
UltimatePointer v. Nintendo
Won affirmance of a summary judgment that Nintendo did not infringe a patent on a hand-held pointing device to control the cursor on a display screen.