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Nicole Stakleff Quoted in Law360 Article, 'Fed. Circ. Reins in Reach of Double-Patenting Doctrine'

12/14/2018
Nicole Stakleff Quoted in Law360 Article, 'Fed. Circ. Reins in Reach of Double-Patenting Doctrine'

N. Nicole Stakleff, a partner with Pepper Hamilton and member of the Health Sciences Department, is quoted in the December 14, 2018 Law360 article "Fed. Circ. Reins in Reach of Double-Patenting Doctrine."

Two recent Federal Circuit decisions have cleared up lingering questions about when patents can be invalidated under the double-patenting doctrine and identified situations where it does not apply, providing patent owners with ways to prevail against invalidity arguments.

...

The decisions the Federal Circuit reached in both cases "suggest the court is looking back and saying we need to limit the impact of [the Federal Circuit's 2014 decision in Gilead Sciences Inc. v. Natco Pharma Ltd.]," said Nicole Stakleff  of Pepper Hamilton.

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However, the Federal Circuit held in Gilead that the key to the analysis is the order in which the patents expire, with the patent that is last to expire being the one subject to being found invalid. The holding left patentees, particularly in the pharmaceutical industry where companies have large and overlapping patent portfolios, with a "lot of angst," Stakleff said.

"You have to look at a lot more pieces right now, since Gilead it calls into question some of the terms for patents that ended up issuing earlier and expiring later," she said.

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"What we feel could be a positive light shining in the distance might not be there because there is a difference in the statutes," Stakleff said.

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