Insights

Washington – August 15, 2024: The 2025 edition of The Best Lawyers in America® has recognized 42 Crowell & Moring lawyers as "Best Lawyers" and 29 lawyers as “Ones to Watch.”

Washington – June 6, 2024: Intellectual Asset Management recognized Crowell & Moring in its IAM Patent 1000 – The World’s Leading Patent Practitioners guide, awarding the firm a gold band ranking as one of the top three firms handling patent litigation and transactions in Belgium, and a silver ranking for the firm’s Chicago office. The firm was also recommended nationally in the United States for trade secrets litigation. This marks the eleventh consecutive year that the firm has been ranked in the guide in Belgium.

The Federal Circuit’s recent decision in Luv n’ Care v. Laurain provides a cautionary tale for patentees. Disclosing prior art to the Patent and Trademark Office (PTO) is not enough to insulate against a finding of inequitable conduct, particularly where a patentee mischaracterizes that prior art and the PTO’s patentability determination may have differed had the patentee accurately described the prior art. Misconduct by the patentee during litigation can also lead to a finding of unclean hands that bars the patentee from relief for alleged infringement against the opposing party in that litigation.

Drug development in the United States is expensive and time-consuming, which makes pharmaceutical patents an important asset for pharmaceutical companies to protect their investment in bringing new drugs to market.  Equally important to the public and other drug companies is that any pharmaceutical patents that are issued by the Patent Office cover only technology that is new and not obvious. Clinical trials frequently lie at the intersection of these two competing interests. Pharmaceutical companies must engage in clinical trials to test their new products and the existence of those clinical trials may become public. But can the announcement of a trial itself render the resulting invention obvious and unpatentable?

A petition for Inter Partes Review (IPR) kicks off an IPR proceeding, and is required to set forth the grounds of invalidity and how the claim terms should be construed. In the precedential opinion Axonics, Inc. v. Medtronic, Inc., the Federal Circuit held that if the patent owner proposes, or the Patent Trial and Appeal Board (PTAB) adopts, a claim construction that is different from the construction proposed by the petitioner, the petitioner should be given an opportunity to present invalidity arguments and evidence under the new construction. In responding to the new claim construction, however, the petitioner is limited to the prior art of record, and it may not rely upon new prior art references. The Federal Circuit left open whether the petitioner may rely upon different embodiments in a previously cited reference.