BSKB News

BSKB Continues Successful Representation of Petitioner Before PTAB and CAFC

BSKB members Gerald M. Murphy, Jr., MaryAnne Armstrong, Ph.D., Eugene T. Perez and Lynde F. Herzbach represented petitioner BioMarin Pharmaceutical Inc. in a series of successful trials before the Patent Trial and Appeal Board (PTAB) and also in related appeals at the Court of Appeals for the Federal Circuit (CAFC).

BSKB BioMarin Case Listed as a Top AIA-Related Decision of 2016 by Law360

The case between Genzyme Therapeutic Products LP and BioMarin Pharmaceutical Inc., in which the Court of Appeals for the Federal Circuit (CAFC) affirmed two decisions by the Patent Trial and Appeal Board (PTAB), has been listed by Law360 in “A Look Back at the Top AIA-Related Decisions of 2016” (article available to Law360 subscribers here). In this case, the CAFC addressed procedural rights before the PTAB, ruling that further evidence of invalidity can be offered after a review is instituted. BSKB members Gerald M. Murphy, Jr., MaryAnne Armstrong, Ph.D., Eugene T. Perez and Lynde F. Herzbach represented petitioner BioMarin Pharmaceutical Inc. in the successful trials before the PTAB and appeals before the CAFC.

BSKB Attorneys Recognized by Legal 500 U.S. for 2015

BSKB partners MaryAnne Armstrong, Ph.D., Michael Cammarata, Charles Gorenstein, Gerald Murphy, Jr. and Michael Mutter have been recognized by the Legal 500 United States in 2015. The annual Legal 500 U.S. rankings are based on peer and client recommendations.

BSKB Attorneys Recognized as IP Stars by Managing IP for 2016

BSKB attorneys MaryAnne Armstrong, Ph.D., Paul Lewis, Michael Mutter and Leonard Svensson have been recognized by Managing IP as IP Stars for 2016. This is the fourth year in a row that Dr. Armstrong and Mr. Lewis have been recognized as IP Stars. BSKB was also listed as “recommended” for intellectual property in Virginia. The results of the 2016 survey can be found here. The IP Stars rankings, published annually by Managing IP, are based on peer and client recommendations.

BSKB Announces Elevation of Lynde Herzbach and Chad Wells to Partnership

BSKB is pleased to announce that Lynde Herzbach and Chad Wells have been elevated to the partnership of the firm. Ms. Herzbach focuses her practice on litigation and post grant proceedings for clients in a variety of fields, including software, electronics, medical devices, pharmaceuticals and manufacturing processes. She also has experience with patent prosecution in the area of electrical engineering. Ms. Herzbach received her B.S.E., cum laude, from the University of Michigan and her J.D. from the University of Michigan Law School.

BSKB Announces 2017 Intellectual Property Seminar Schedule

BSKB’s annual U.S. intellectual property law seminars are back for 2017. With over 30 years of experience in educating participants from around the world in IP topics, BSKB continues this tradition with our 2017 seminar series:

Birch, Stewart, Kolasch & Birch, LLP ranked in 2020 “Best Law Firms”

click here to read the release.

BSKB and WIPR to Present Webinar on Obviousness in PTAB Trials for Chem/Pharma/Bio Patents

BSKB will partner with World Intellectual Property Review (WIPR) to present a complimentary webinar on October 13, 2016, entitled “Obviousness in PTAB Trials for Chem/Pharma/Bio Patents.” The webinar, presented by partners Gerald Murphy, Jr. and Eugene Perez, will discuss several leading Patent Trial and Appeal Board (PTAB) decisions and related appeals that illustrate when obviousness challenges have and have not been successful. Mr. Murphy and Mr. Perez, who have successfully argued for chemical, pharmaceutical and biotech patents before the PTAB, will be joined by Kristi Sawert, Ph.D., Administrative Patent Judge at the U.S. Patent and Trademark Office. Dr. Sawert has prosecution and litigation experience in private practice as well as USPTO experience at the Solicitor’s Office and the PTAB. Register for free on the webinar registration page. Virginia CLE credit is pending, and can be used to seek CLE credit in other jurisdictions.

Andrew Meikle to Speak at FICPI’s 16th Open Forum in St. Petersburg

BSKB partner Andrew D. Meikle will speak at the Fédération Internationale des Conseils en Propriété Industrielle (FICPI) 16th Open Forum, held October 5-8, 2016, in St. Petersburg, Russia. Mr. Meikle, who is President of the U.S. section of FICPI, will be speaking on a panel addressing how companies can better protect their inventions and improve internal processes, such as communication with inventors. The FICPI Open Forum offers attendees from around the world a chance to come together to discuss the changing landscape of IP, with specialized sessions for patent attorneys and trademark attorneys, as well as sessions on business practice issues.

Andrew Meikle to Attend FICPI EXCO Meeting in Cartagena, Colombia

Andrew D. Meikle, President-Elect of the U.S. Section of Fédération Internationale des Conseils en Propriété Industrielle (FICPI), will attend the FICPI EXCO meeting in Cartagena, Colombia, held January 20-24, 2013. Mr. Meikle previously served as Treasurer of the U.S. Section of FICPI.

Who’s First? New Rules on Filing Patents

Twitter Terms of Service Do Not Provide “Others” with Affirmative Defense to Copyright Infringement

Absent a statement to the contrary, content on the Internet is not dedicated to the public domain and free for all to reproduce and distribute

Andrew Meikle Presents on AIA Strategies at FICPI ABC Meeting

BSKB partner Andrew D. Meikle participated in the Fédération Internationale des Conseils en Propriété Industrielle (FICPI) ABC Meeting in New Orleans, where he presented a lecture entitled “How the USPTO Rules Implement the AIA: Prosecution Strategies and Tips.” The meeting took place May 15 – 18, 2013. Mr. Meikle is President-Elect of the U.S. Section of FICPI.

Partner MaryAnne Armstrong, Ph.D. Quoted in Life Sciences IP Review on CAFC Amgen v. Sandoz Decision

BSKB partner MaryAnne Armstrong, Ph.D., was quoted in the July 23, 2015 Life Sciences IP Review article entitled “‘Patent Dance’ Ruling Leaves Lawyers in a Spin.” Discussing the recent U.S. Court of Appeals for the Federal Circuit’s (CAFC) decision in Amgen v. Sandoz, Dr. Armstrong said that although she believed the court’s ruling was the “interpretation that the biosimilar industry was hoping for”, there is a lack of clarity over the 180-day rule. Furthermore, “what is the penalty if the applicant does not provide the reference product sponsor with the required 180-day notice? This question was not answered in the dispute because Sandoz provided notice after they received approval. But what would be Amgen’s recourse if Sandoz did not provide notice and simply launched their product?”

Partner MaryAnne Armstrong, Ph.D. comments on the Federal Circuit’s recent precedential decision in Natural Alternatives International Inc. v. Creative Compounds LLC.

Read the full article here.

Partner Charles Gorenstein Quoted in IP360 Article on Yahoo v. Facebook Case

BSKB partner Charles Gorenstein was quoted in a March 14, 2012 Intellectual Property Law360 article about Yahoo’s latest suit against Facebook, filed this week in a California court. The case, which alleges that Facebook infringes on 10 Yahoo patents related to advertising, privacy and social networking, is being watched closely for its impact on Yahoo’s faltering bottom line. According to Mr. Gorenstein, however, “a patent suit is probably not going to be at the forefront of most consumers’ minds.” He explains in the article, “I don’t know that the fact that this occurred is going to cause people to not use Yahoo.” Subscribers can read the full article on Law360’s website.

Law360 Quotes Partner Charles Gorenstein on Recent Patent Agent Privilege Decision

BSKB partner Charles Gorenstein was quoted in a March 9, 2016 Law360 article discussing the recent Federal Circuit decision regarding patent agent privilege. The decision recognizes a privilege that applies to communication between patent applicants and patent agents, but extends only to communications necessary to prosecute patents and to engage in other activities for which agents are authorized. Prior to this decision, some district courts recognized patent agent privilege, while others did not. Mr. Gorenstein states, “The biggest effect here is the certainty. The court has taken an issue that has been bouncing around the district courts for a time and let everyone know where the line is. We know where there is privilege and where there is not privilege, and certainty is good.”

Law360 Quotes Partner Charles Gorenstein on Potential Impact of Federal Hiring Freeze on USPTO

BSKB partner Charles Gorenstein was quoted in a January 24, 2017 Law360 article entitled “Federal Hiring Freeze Could Hurt Patent Quality,” where he discussed the potential impact of the recently instituted federal hiring freeze on processes at the U.S. Patent and Trademark Office (USPTO). Potential impact of the freeze at the USPTO includes possible delays in the patent process, from application intake to examination, as well as the potential for a decrease in quality, as attempts are made to stay on deadline with increased workloads. Mr. Gorenstein notes that the patent office might be particularly susceptible to the effects of this freeze because there has historically been a relatively high turnover rate in the examining corps. He also states “If they continue to lose examiners at really any rate — a normal rate or a higher-than-normal rate — and if they can’t replace them, then inevitably we’ll see a slowdown of output and the backlog will increase. Obviously, that’s going to happen if there are fewer people to do the work.”

Law360 Article Features Advice from BSKB Partners James M. Slattery and John W. Bailey

BSKB partners James M. Slattery and John W. Bailey were featured in the recent Law360 article “Welcome To The Club: Advice From Old To New Partners.” Veteran partners were asked to offer advice based on their years of experience to those recently promoted to the role.

Intellectual Property Watch Quotes Michael K. Mutter on the Case of Alice Corp. v. CLS

BSKB partner Michael K. Mutter was quoted in a recent Intellectual Property Watch article on the case of Alice Corp. v. CLS. Regarding the decision of Federal Circuit on this case, he said, “I don’t think anyone right now knows what the law is.” Mr. Mutter was also quoted as saying, “You have a 50-50 divided Federal Circuit producing diametrically opposed opinions. I’ve been doing this for 34 years, and I’ve never seen anything like this before.”