Knobbe/Martens: Intellectual Property Law

Jonathan Bachand

“Term Act of 2019” Proposes Shifting Patent Challenge Burdens to Branded Companies

A new bill introduced in Congress last week may limit the ability of branded pharmaceutical companies to extend the period of exclusivity products beyond the term of a single patent. 

The bill, titled “Terminating the Extension of Rights Misappropriated Act of 2019” or “TERM Act of 2019,” places greater scrutiny on the practice of obtaining multiple patents with overlapping terms to cover a single drug product or biological product.  

Four New Rules at the ITC That Patent Litigators Need to Know

June 18, 2018 Sheila Swaroop and Jonathan Bachand

The ITC has issued a series of new rules applying to all Section 337 investigations instituted after June 7, 2018.  Although the overall impact of these new rules is not yet known, attorneys will find the following four changes of particular interest.


ITC Reiterates the Importance of Quantitative Evidence to Establish a Domestic Industry

On January 12, 2018, Judge David P. Shaw issued an order denying Complainant Wirtgen America, Inc.’s (“Wirtgen America”) motion for summary determination on the economic prong of the domestic industry requirement in Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067.

Federal Circuit Clarifies Scope of On-Sale Bar

February 12, 2018 Jonathan Bachand and Jeremiah S. Helm

            In Medicines Co. v. Hospira, Inc., 2014-1469; 2014-1504 (Dyk, Wallach, Hughes), the Federal Circuit affirmed the district court’s finding of non-infringement but reversed the district court’s determination that an agreement to distribute the Angiomax drug product did not constitute an offer for sale under 102(b).  The panel remanded for a determination of whether the agreement covered the patented invention.  This holding, and the prior en banc holding of the Court in Medicines Co. v. Hospira, Inc., 827 F.3d 1363 (Fed. Cir. 2016) (Medicines I), help clarify what may be an invalidating “offer for sale” or “sale” under 35 U.S.C. § 102(b).


Attorney Finder