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In Nuvo Pharmaceuticals v. Dr. Reddy’s Laboratories (Fed. Cir. 2019), the Federal Circuit held that a patent on a claimed pharmaceutical formulation was invalid for having an inadequate written description, even though the patent disclosed, in sufficient detail, effective formulations.

It is typical for primary aspects of a technology to be recognized as a valuable asset; things readily perceived as inventive deviations from the conventional, technical inflection points that set processes or products apart from comparative offerings of competitors.  Organizations readily recognize such inventions as needing patent protection.  However, patentable inventions don’t always spring from multi-million-dollar R&D budgets.  Often, they result from engineers and scientists simply focusing on the best way to solve a problem, perform some function more efficiently, or getting more product out the door.  As such, they don’t necessarily relate to the central portion of a process or technology.  Nor do they always appear as something patentable, if to the untrained eye they merely resemble useful twists on things known.  For example, boilers, steam generation and their corresponding controls have long been used, however, Patent No. 10,125,973 applies a steam generation process to oil production.  Magnetic separation processes are also known; however, Patent Nos. 10,138,410 & 10,150,908 demonstrate applying a form of magnetic separation to purifying injection well water.  Everyone learns about precipitation separation of compounds from aqueous solutions in chemistry lab, however, Patent No. 10,258,920 demonstrates an application to a Kuwait oilfield.

Carbon Dioxide injection has been used effectively for enhanced oil recovery from reservoirs, since at high pressures it forms a miscible mixture with oil, increasing the volume of the oil, and allowing it to dislodge additional material from the rock as it pushes through the formation.[1]  CO2 injection is often used in a process known as water alternated with gas (WAG), where the gas and water are alternately injected into the well, thereby mitigating the tendency of the lower density gas to migrate to the top of the reservoir and bypass other sections.[2]  Interest in CO2 injection continues, not simply in conventional oil reservoirs, but in unconventional reservoirs as well.[3]  Not surprisingly, aspects of CO2 injection find their way into patent claims.

This is an article in a series reviewing Enhanced Oil Recovery (EOR) patents granted in approximately the last year.  In particular, the patents highlighted here relate to fluids injected into the well to improve oil recovery: specifically, co-solvent systems and systems containing multicarboxylates.

Dilworth IP is very excited to announce that our new website, launched earlier this year to more accurately represent the culture and values of our firm, has been chosen from over 200,000 entries as a Platinum Winner of the prestigious Hermes Award—an honor awarded to only 1% of applicants. The Hermes Creative Awards is an international competition that is administered and judged by the Association of Marketing and Communication Professionals (AMCP), and recognizes excellence in the concept and design of marketing programs. Entries are submitted from a wide array of industries, and are judged at random on a point system according to their particular merits rather than directly compared to other entries

The ‘209 Patent includes method claims where folic acid and a methylmalonic acid lowering agent (e.g., vitamin B12) are administered prior to treatment with the antifolate pemetrexed disodium, a chemotherapy agent.[3]  The folic acid and methylmalonic acid are used to ameliorate the toxic effects of the pemetrexed.[4]  The heart of the Board’s conclusion was that although it was known to use folic acid to reduce the toxicity of antifolates such as pemetrexed, there was no reason to pretreat with vitamin B12 and folic acid prior to treatment with pemetrexed for cancer.[5]  On appeal, the Petitioner’s obviousness arguments related to the EP005 reference, which taught use of folic acid in conjunction with vitamin B12 to reduce homocysteine levels for all purposes.[6]  Homocysteine is an amino acid, and when present in high levels is predictive of pemetrexed toxicity.[7]  On its face this appears to be a solid case for obviousness.  Indeed, those arguing against motivation to combine during patent prosecution have almost certainly encountered an Examiner’s response referencing MPEP 2144IV at one time or the other:

Trade secret law provides protection for information that its owner takes reasonable measures to keep secret and that derives independent economic value from not being generally known or readily ascertainable. If a trade secret is misappropriated by another, the owner may be entitled to damages, an injunction preventing further use or disclosure of the trade secret, and in some cases the recovery of attorneys’ fees.

In Endo Pharmaceuticals Inc. v. Teva[1] the Federal Circuit has further clarified the patent eligibility of treatment methods which include natural elements.  The Opinion, which includes comparisons with other cases such as Vanda[2], CellzDirect[3] and Ariosa Diagnostics[4], leaves one crafting such claims on ground that is fairly firm.

At Dilworth IP, we understand that our clients are driven to innovate and advance technology in order to make life better for all humanity. Our aim is to guide them toward this goa. Knowing that our clients require counsel with a sophisticated understanding of their technology, and an empathy for the pressures they face, we have continued to make additions to our team. Our newest team member, Tim Johnson, who joins the firm as a Partner, has over 15 years of experience working in-house. He has an intimate understanding of the pressures facing his clients, and uses this perspective to create tailored strategies for each of them. Tim has technical expertise in the mechanical arts, fasteners/connectors, material science, injection molded devices, metallurgy, hard coatings, sensors, smart appliances, software, manufacturing processes, laminates, and electro-mechanical and IoT devices.

There is a scene in the Big Lebowski where the Dude complains about the lousy day he just had as he tosses down some snacks at a bowling alley bar.  In answer, the Stranger (played by Sam Elliot) offers the above advice as to the Dude’s existential situation.  It didn’t help.  One can almost imagine a similar response from Apple following the Federal Circuit’s decision in Personal Web Technologies, LLC, v. Apple, Inc., 2018-1599 (Fed. Cir. March 8, 2019), since it marked the second time in two years they had won at the Board, only to be disappointed at the Federal Circuit on the same patent, PWT’s 7,802,310 (‘310 Patent)[1].  While the Federal Circuit’s analysis in both cases was nominally different, the underlying theme in both was the need for a proper motivation-to-combine analysis.