Mandy H. Kim
Subscribe to Mandy H. Kim's PostsMandy H. Kim focuses her practice on intellectual property litigation. Mandy has significant experience managing complex litigations across a wide range of technologies, including in the life sciences, biotechnology, medical devices, computer hardware and software, and consumer electronics industries. Mandy routinely handles motion practice, fact and expert discovery matters, and has litigated a number of cases from pleadings through trial and/or settlement. She has represented clients in federal and state courts, and before the International Trade Commission. Read Mandy H. Kim's full bio.
2023 IP Outlook: What to Watch in Patent, Trademark and Copyright Law
By Sarah Bro, Douglas Carsten, Syed K. Fareed, Mandy H. Kim, Charles Larsen, Christina (Tina) L. Martini, Jennifer M. Mikulina, Amol Parikh, Eleanor B. Atkins, Cecilia Choy, Ph.D., Anisa Noorassa, Alexander Piala, PhD, Joshua Revilla, Christian Tatum and Diana Pisani on Feb 7, 2023
Posted In Copyrights, EU Update, Life Sciences, Patents, Technology, Trademarks
Coming out of 2022, developments around the globe are shaping the intellectual property (IP) landscape in the new year. We are seeing cases at the intersection of IP law and NFTs, the opening of the Unified Patent Court in Europe, and decisions from the Supreme Court of the United States and the Court of Appeals...
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Hold That Generic, Please: Supreme Court Grants Emergency Request to Stay Federal Circuit’s Mandate
By Mandy H. Kim on Oct 6, 2022
Posted In Patents
In a rare action by the Supreme Court of the United States, Chief Justice Roberts granted Novartis’s emergency request for a stay of a mandate from the US Court of Appeals for the Federal Circuit, which had found a Novartis patent invalid for lack of adequate written description and would have permitted generic versions of...
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Heightened Written Description Standard for Negative Limitations?
By Mandy H. Kim on Jun 30, 2022
Posted In Patents
Addressing the issue of negative claim limitations, the US Court of Appeals for the Federal Circuit granted a petition for panel rehearing, vacated its prior decision (authored by now-retired Judge O’Malley) and reversed the district court’s finding that the patent was not invalid for inadequate written description. Novartis Pharms. v. Accord Healthcare Inc., Case No....
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Silence May Be Sufficient Written Description Disclosure for Negative Limitation
By Mandy H. Kim on Jan 13, 2022
Posted In Patents
Addressing the issue of written description in a Hatch-Waxman litigation, the US Court of Appeals for the Federal Circuit affirmed the district court’s finding that the patent adequately described the claimed daily dose and no-loading dose negative limitation. Novartis Pharms. v. Accord Healthcare Inc., Case No. 21-1070 (Fed. Cir. Jan. 3, 2022) (Linn, O’Malley, JJ.)...
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Obvious to Try Requires Reasonable Expectation of Success Tethered to Claimed Invention
By Mandy H. Kim on Dec 16, 2021
Posted In Patents
Addressing obviousness in the context of method of treatment claims using particular drug dosages, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) final written decision holding that Teva failed to prove obviousness because it failed to show a reasonable expectation of success. Teva Pharms., LLC v....
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Another Genus Claim Bites the Dust for Lack of Written Description
By Mandy H. Kim on Sep 9, 2021
Posted In Patents
Addressing the issue of written description in the context of antibody-related genus claims, the US Court of Appeals for the Federal Circuit reversed a $1.2 billion jury verdict and found genus claims using functional language invalid for lack of written description. Juno Therapeutics, Inc. v. Kite Pharma, Inc., Case No. 20-1758 (Fed. Cir. Aug. 26,...
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Government Contractors May Include Restrictive Markings on ‘Unlimited Rights’ Data
By James W. Kim and Mandy H. Kim on Jan 7, 2021
Posted In Copyrights
The US Court of Appeals for the Federal Circuit reversed an Armed Services Board of Contract Appeals (ASBCA) denial of summary judgment and held that a federal contractor may include certain restrictive markings on “unlimited rights” data supplied to the US government. The Boeing Company v. Secretary of the Air Force, Case No. 19-2147 (Fed....
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“Method of Preparation” Claims Still Patent Eligible Under § 101 in Modified Opinion
By Mandy H. Kim on Aug 13, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit denied an accused infringer’s petition for rehearing en banc and issued a modified opinion with additional analysis maintaining its prior finding that patent claims directed to a method of preparation were patent eligible. Illumina, Inc. v. Ariosa Diagnostics, Inc., Case No. 19-1419 (Fed. Cir. Aug. 3,...
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Glass Half Empty: Patent Reciting “Half Liquid” Is Indefinite
By Mandy H. Kim on Aug 13, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed the district court’s finding that the asserted patent claims were invalid as indefinite because the meaning of the term “half-liquid” was not reasonably clear from the record. IBSA Institut Biochimique, S.A. v. Teva Pharms. USA, Inc., Case No. 19-2400 (Fed. Cir. July 31, 2020) (Prost,...
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“Non-Limiting” Prior Art Claims Support Obviousness After Standing Is Established
By Mandy H. Kim on May 14, 2020
Posted In Patents
Addressing the issue of Article III standing and obviousness in an appeal of an inter partes review (IPR) decision, the US Court of Appeals for the Federal Circuit found that the petitioner had standing to appeal because past activities created a controversy between the parties. Grit Energy Solutions, LLC v. Oren Techs., LLC, Case No....
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