IP Strategy in Action

KIPS focuses on providing the highest level IP strategy and patent policy advocacy.
The following selection of cases and briefs exemplify our “Strategy in Action.”

 

Tafas and GSK v. Dudas (Kappos)

Verified Complaint

Memorandum Decision Granting GSK’s Request for TRO and Preliminary Injunction

SmithKline Beecham Corp., SmithKline Beecham PLC and Glaxo Group Limited v. Jon Dudas and the US Patent and Trademark Office, 511 F. Supp 2d 652 (E.D. Va 2007)

Memorandum Opinion Granting GSK’s and Tafas’ Request for Summary Judgment

Triantafyllos Tafas consolidated with SmithKline Beecham Corp., SmithKline Beecham PLC and Glaxo Group Limited v. Jon Dudas and the US Patent and Trademark Office, 541 F. Supp 2d 805 (E.D. Va 2008)

Order of U.S. Court of Appeals for the Federal Circuit Granting En Banc Review

Triantafyllos Tafas consolidated with SmithKline Beecham Corp., SmithKline Beecham PLC and Glaxo Group Limited v. Jon Dudas and the US Patent and Trademark Office, 559 F. 3d 1345 (Fed. Cir. 2009)

Order of U.S. Court of Appeals for the Federal Circuit Dismissing Case

Triantafyllos Tafas consolidated with SmithKline Beecham Corp., SmithKline Beecham PLC and Glaxo Group Limited v. Jon Dudas and the US Patent and Trademark Office, 586 F. 3d 1369 (Fed. Cir. 2009)

 

Advair Prosecution

Advair Patent Reissue No. 40045: Instrumental in achieving the reissue of key patent covering GSK product Advair (US Patent No. 7,578,601)

 

Ariad Pharmaceuticals, Inc., Massachusetts Institute of Technology,
The Whitehead Institute for Biomedical Research and the President and
Fellows of Harvard College v. Eli Lilly (Fed. Cir. 08-1261)

Amicus Brief of Amicus Curiae GSK in Support of Eli Lilly & Company (Nov 19, 2009)

 

Pfizer, Inc., v. Apotex, Inc. (Fed. Cir Appeal No. 06-1261)

Brief of Amici Curiae of SmithKline Beecham Corporation (d/b/a GlaxoSmithKline) and Eli Lilly and Company in Support of Petitioner Pfizer, Inc. (April 6, 2007)

 

Conor Medsystems v. Angiotech Pharmaceuticals, Inc., and Ors (United Kingdom)

Represented Conor Medsystems as global strategist in cardiovascular stent litigation against Angiotech Pharmaceuticals, Inc., and Boston Scientific Corporation. Facilitated the invalidation of key Angiotech patent on taxol eluting stents at UK Court of Justice (Patents Division) and UK Court of Appeals. Conor was then acquired for US 1.4 billion by Johnson & Johnson. J&J thereafter withdrew from the UK litigation and Angiotech won a decision at the UK House of Lords in the absence of a strategic adversary.

Conor Medsystems v. Angiotech Pharmaceuticals, Inc., and Ors [2006] EWHC 260 (February 24, 2006)

Conor Medsystems v. Angiotech Pharmaceuticals, Inc., and Ors [2007] EWCA Civ 5 (January 16, 2007)

Conor Medsystems v. Angiotech Pharmaceuticals, Inc., and Ors [2008] UKHL 49 (9 July 2008)

 

Representative Cases in Australia

Conor Medsystems, Inc., v. University of British Columbia (No. 2) [2006] FCA 32 (3 February 2006): Established new law in Australia that if an Australian Patent issues to several listed applicants, each must be entitled to the patent by virtue of co-inventorship. An Australian patent issued in the name of joint patentees is void if any of the patentees is not an inventor.

Conor Medsystems, Inc., v. University of British Columbia [2006] FCAFC 154 (31 October 2006) Affirms ruling in favor of Conor by Federal Court of Australia on construction of entitlement law.

BioChem Pharma Inc. v. Commissioner of Patents & Anor [1998] FCA 184 (11 March 1998) Ms. Knowles and Robert Baechtold (Fitzpatrick, Cella, Harper and Scinto) were the first foreign patent attorneys to be given the right to directly represent a client in adversarial proceedings at the Australian Patent Office.

Emory University v. BioChem Pharma Inc. (No. 2) [2000] FCA 1708 (23 November 2000) Won confirmation that a divisional application can be filed from a divisional application in Australia.

Emory University v. Commissioner of Patents & Anor [1997] FCA 1465 (19 December 1997) Case raised the issue for the first time whether the Australian Patent Office can consider documents on a confidential basis during an Opposition Proceeding. Led to a change in regulatory law promulgated by the APO that provides a procedure for such inspection.

 

Emory University: Key U.S. Prosecution Decisions on FTC
(leading anti-HIV drug sold by Gilead in Emtricitabine, Truvada and Atripla)

Dionne v. Liotta (Interference no. 103,906) Decision on Preliminary Motions (Oct 5, 1998) Invalidated adverse patent by winning decision that a claim directed to a method to treat a viral disease in a mammal was not valid for failing to satisfy 35 U.S.C. Sec. 112.

Dionne v. Liotta (Interference no. 103,906) Final Decision (July 5, 2001) Confirmed invalidation of patent and win in October 5, 1998, decision.

Cheng v. Liotta v. Belleau v. Liotta (Interference No. 104,019) Decision on Preliminary Motions (Oct 28, 1998) Invalidated adverse patent by winning decision that claims failed to satisfy 35 USC 112.

Dionne v. Liotta (Interference no. 104,333) Memorandum Opinion and Order October 31, 2001 Won senior party status (and thus interference) against adverse patent.

In re Application of Liotta et al., Appl. No. 08/402,730: Decision on Petition to Withdraw Terminal Disclaimer (June 3, 2003) (Based on Petition filed Sept 9, 2002) Won withdrawal of Terminal Disclaimer of allowed claims of US Patent No. 6,703,396 over granted claims of US Patent Nos. 5,814,639 and 6,114,343.

In re Application of Liotta et al., Appl. No. 08/475,339; Decision on Petition to Withdraw Terminal Disclaimer (June 17, 2003) (Based on Petition filed Sept 9, 2002) Won withdrawal of Terminal Disclaimer of allowed claims of US Patent No. 6,642,245 over granted claims of US Patent No. 5,210,085.