No. 20-1604

Biogen MA Inc. v. EMD Serono, Inc., et al.

Lower Court: Federal Circuit
Docketed: 2021-05-18
Status: Denied
Type: Paid
Experienced Counsel
Tags: anticipation claim-construction incentives medical-treatment method-of-treatment novelty patent patent-law patent-validity prior-art recombinant-protein
Key Terms:
Patent JusticiabilityDoctri
Latest Conference: 2021-09-27
Question Presented (AI Summary)

Whether courts may disregard the express claim term 'recombinant' so as to render a method-of-treatment patent anticipated—and thus invalid—in light of prior-art treatments that used the naturally occurring human protein, where it is undisputed that the recombinant protein was not used in the prior art?

Question Presented (OCR Extract)

QUESTION PRESENTED The patent in this case claims a method of medical treatment that requires use of a “recombinant,” or synthetic version, of a human protein. That synthetic, recombinant version does not exist in nature. The Federal Circuit held, in violation of this Court’s longstanding precedent, that the claim term “recombinant” must be ignored in assessing whether the method of treatment is novel. The question presented is: Whether courts may disregard the express claim term “recombinant” so as to render a method-of-treatment patent anticipated—and thus invalid—in light of prior-art treatments that used the naturally occurring human protein, where it is undisputed that the recombinant protein was not used in the prior art? (i)

Docket Entries

2021-10-04
Petition DENIED.
2021-08-04
DISTRIBUTED for Conference of 9/27/2021.
2021-08-03
Reply of petitioner Biogen MA Inc. filed. (Distributed)
2021-07-19
Brief of respondents EMD Serono, Inc. and Pfizer Inc. in opposition filed.
2021-06-08
Motion to extend the time to file a response is granted and the time is extended to and including July 19, 2021.
2021-06-07
Motion to extend the time to file a response from June 17, 2021 to July 19, 2021, submitted to The Clerk.
2021-05-14
Petition for a writ of certiorari filed. (Response due June 17, 2021)

Attorneys

Biogen MA Inc.
Jeffrey Alan LamkenMoloLamken LLP, Petitioner
Jeffrey Alan LamkenMoloLamken LLP, Petitioner
EMD Serono, Inc. and Pfizer Inc.
Mark Andrew PerryGibson, Dunn & Crutcher LLP, Respondent
Mark Andrew PerryGibson, Dunn & Crutcher LLP, Respondent