Cadwalader’s Dorothy Auth Presents at IIPLA 2021 USA

November 11, 2021

Cadwalader Intellectual Property Group chair Dr. Dorothy Auth last week participated in a program hosted by the International Intellectual Property Law Association (IIPLA), titled “Navigating the Intersection between Patent Prosecution and Patent Litigation,” that addressed patent eligibility from both the life sciences and high-tech perspectives as well as prosecution history estoppel as issues affecting litigation.

The hybrid event, which took place both virtually and live in Las Vegas, gathered IP industry practitioners and professionals from all over the world to discuss the latest topics and trends in the IP industry.

Auth was joined on her panel by Samantak Ghosh, senior counsel (IP) at Gilead Sciences; Curtis Smolar, general counsel at Legalist; Thomas Rössler, patent attorney at LUXPATENT Intellectual Property; and Michael Rueckheim, a partner at Winston & Strawn.

For her part, Auth presented on the exceptions to the application of prosecution history estoppel in the analysis of patent infringement under the doctrine of equivalents. In particular, she discussed four recent cases which addressed one such exception, called the “tangential relation.” These cases provided attendees with useful guidance on how to apply the tangential relation when faced with prosecution history statements that could limit the scope of the doctrine of equivalents. In addition, Auth provided pointers for patent prosecutors in how to avoid making damaging statements during prosecution as well as to litigators in addressing how to minimize the effects of such prosecution statements.

The panel addressed other topical issues, including:

  • On the life sciences side, the differences between diagnostic and method of preparation claims in overcoming 101 rejections
  • On the high tech side, the discrepancy in patent eligibility standards applied in the US Patent Office as compared to those set by the Supreme Court and the potential for the courts to further expand the restrictions on patent eligibility in the case American Axle pending at the U.S. Supreme Court   
  • An update on the European patent laws
  • The prerequisites for litigation funding

Auth has 30 years of experience in coordinating global IP enforcement, licensing and procurement strategies for clients in diverse industries, including biotechnology, pharmaceutical, and medical devices, as well as consumer products, computers and financial services.