The Dobrusin Law Firm - Intellectual Property

Strategic Intellectual Property Law

Month: June 2021

Bryan Lemanski Named Law School Liaison for Michigan Intellectual Property Association

The Michigan Intellectual Property Law Association (MIPLA) has selected Dobrusin Law Firm associate Bryan Lemanski to serve as the organization’s Law School Liaison for the 2021-22 term.

Founded in 1913, MIPLA comprises intellectual property attorneys, patent agents, and law students from across the state who practice IP law or are otherwise interested in patent, trademark, copyright, and related issues. One of MIPLA’s core functions is to generate interest in IP among law students in Michigan and help them foster relationships that will benefit them after they graduate.

In his new role, Bryan will coordinate with students at local law schools and host educational programs, panel discussions, and networking events throughout the year with MIPLA members. He will also oversee communications for law students who belong to MIPLA or are interested in joining.

The Decision to Deny Institution of IPR Is Non-Appealable Except in Extraordinary Circumstances, Federal Circuit Rules

The Federal Circuit recently ruled it has no jurisdiction to review decisions of the Patent Trial and Appeal Board (PTAB) denying institution of inter partes review (IPR) proceedings, except in the extraordinary circumstance where a writ of mandamus is justified. The decision in Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., effectively means that, in most cases, PTAB’s denial of an IPR petition is the end of the road for patent challengers who want to pursue that potential remedy.

Procedural Background

In 2019, Janssen sued Mylan in district court for infringement of a schizophrenia drug patent. While that case was pending, Mylan filed a petition with PTAB for institution of IPR of the biomedical technology patent at issue. The Board denied Mylan’s petition, basing its decision on its six-factor standard for evaluating whether to deny institution given earlier trial dates in co-pending district court proceedings regarding the same drug patent. Trial dates were rapidly approaching in co-pending litigation, which substantially overlapped with the issues raised in the IPR petition, including the second suit in which Mylan was not a party.

Mylan appealed the Board’s decision, asserting that the denial of institution based on the timing of a separate district court litigation to which Mylan was not a party violated Mylan’s constitutional and due-process rights. It also claimed that “the Board’s continued adoption and application of non-statutory institution standards through ad hoc proceedings lie in contrast to congressional intent.” On the same grounds, Mylan also requested mandamus relief.

The Federal Circuit granted Janssen’s motion to dismiss the appeal for lack of jurisdiction. The court based its decision by squaring the language in its general grant of jurisdiction under federal statute.

IPR Decisions: Appealable. Decisions Denying Institution of IPR: Non-Appealable.

28 U.S.C. § 1295(a)(4) provides that the court “shall have exclusive jurisdiction . . . of an appeal from a decision of [the Board] with respect to . . . inter partes review . . .“ However, 35 U.S.C. 314(d) states that “the determination by the Director whether to institute an inter partes review under this section shall be final and non-appealable.”

Based on the statutory construction rule that a more specific provision prevails over a broader one, the court concluded that, taken together, “those statutes preclude direct appeal from a decision denying institution.”

“At a first glance, the ‘appeal from a decision’ language in § 1295(a)(4) seems broad, perhaps broad enough to reach an appeal from a decision denying institution,” the court wrote. “But § 314(d), the more specific statute, dispels any such notion… Section 314(d) prevents ‘appeal’ from a decision denying institution. Without the ability to ‘appeal,’ parties cannot make use of § 1295(a)(4)’s jurisdictional grant.”

However, the Federal Circuit found it did have jurisdiction to review IPR denial decisions under a petition for mandamus under extraordinary circumstances. After considering Mylan’s mandamus petition on the merits, the court concluded that it had not met the extremely high bar required for mandamus relief.

If you have questions about the Mylan decision or about inter partes review generally, please contact the patent attorneys at The Dobrusin Law Firm.

Michigan Lawyers Weekly Names Katherine Pacynski to the 2021 Class of “Up & Coming Lawyers”

We are pleased to announce shareholder Katie Pacynski was selected to Michigan Lawyers Weekly’s 2021 class of “Up & Coming Lawyers.”

The annual award spotlights lawyers in their first ten years of practice who have established names for themselves by displaying the ambition, drive, and accomplishments that distinguish them from their peers. Michigan Lawyers Weekly celebrated Katie and her fellow honorees at a virtual awards presentation on June 10, 2021.

Since joining the Dobrusin Law Firm as an attorney in 2013, Katie has focused her intellectual property practice on patent preparation and prosecution in the chemical, materials science, and mechanical arts, working with clients ranging from large corporations to individual inventors. She prides herself on delivering excellent legal representation and exceptional client service.

In addition to her lawyering skills, Katie was named an “Up & Coming Lawyer” for her commitment to the legal profession. She recently completed her term as president of the Women’s Bar Association and will continue to serve on the organization’s executive board. Katie is also active with the Michigan Intellectual Property American Inn of Court.

This recognition from Michigan Lawyers Weekly is the latest in a series of honors Katie has received. In the last four years, she has been named to the lists of DBusiness Top Lawyers in Intellectual Property and Patent Law, Best Lawyers: One to Watch, and Super Lawyers® Rising Stars, and is a member of the Oakland County Executive’s Elite 40 Under 40.

Please join us in congratulating Katie on this well-deserved award!

Erin Klug Sworn in as President-Elect of the Women Lawyers Association of Michigan

We proudly announce that Dobrusin Law Firm shareholder Erin Klug was sworn in as the 2021-22 President-Elect for the Women Lawyers Association of Michigan (WLAM). The ceremony took place on the Michigan Hall of Justice steps in advance of the recent WLAM Annual Meeting. Michigan Supreme Court Justice Elizabeth Clement officiated, swearing in Erin and all other new officers.

Founded in 1919, WLAM has a membership comprising attorneys, judges, and law students. Its core mission is to secure the rights of women in society and advance the interests of women members of the legal profession, promote improvements in the administration of justice, promote equality and social justice for all people, improve relations between the legal profession and the public, and encourage the continued legal education of lawyers.

Erin enjoys an impressive record of service in Michigan’s legal community. She is a Past President of the Women’s Bar Association, a Board Member for Attorneys for Animals, and an active member of the Michigan Intellectual Property Inn of Court. She has been involved with the WLAM for more than 12 years, receiving the organization’s Leadership Award in 2017.

Erin has earned accolades from her peers and throughout the business community. Over the last few years, Crain’s Detroit named her among its Notable Women Lawyers, Michigan Lawyers Weekly honored her as an Up & Coming Lawyer, and DBusiness recognized Erin as a Top Lawyer in Intellectual Property and Patent Law.

IP Lawyer Erin Klug

Erin Morgan Klug

Detroit Area IP Attorney

Dobrusin Law Firm Sponsors 2021 Women Lawyers Association of Michigan Foundation Scholarship

In 2019, our firm joined the Women Lawyers Association of Michigan Foundation’s (WLAM Foundation) annual scholarship program to encourage and support the next generation of attorneys, especially female attorneys. We are pleased to announce the recipient of this year’s WLAM Foundation Dobrusin Law Firm Scholarship is Nichole Van Blaricum, a second-year student at Wayne State University Law School.

Nichole received a Bachelor of Arts in Anthropology from Michigan State University in 2008 and spent the following year surveying and archiving artifacts at the Buried Gardens of Kampsville, Illinois, with the Center for American Archeology. She then earned a Master of Science in Historic Preservation from Eastern Michigan University in 2013, supplementing her studies by helping to restore the Bahreden Lodge in Pine, Colorado, and conducting surveys for the Michigan Barn Preservation Network, where she now serves as the Network’s secretary and a member of the board. A certified architectural historian, Nichole has documented conditions and locations of historic Detroit homes and wrote the history portion of the Packard Plant Project website.

Turning her sights on the law, Nichole entered Wayne State University Law School in 2019 and has continued to give back. She clerks part-time for a busy Detroit boutique law firm, volunteers with the school’s Asylum & Immigration Law Clinic, and was awarded an Innovation Grant to restructure and teach the Introduction to Cultural Anthropology online course as an adjunct professor at Mid-Michigan Community College.

The Dobrusin Law Firm is one of eight law firms and professional organizations that sponsor the WLAM Foundation’s annual scholarship program, which awards scholarship money to Michigan’s brightest women law students. Besides their superior academic performance at Michigan law schools, this year’s 11 recipients demonstrate leadership and advance performance in important areas of the law, including STEM, social justice, equality, child advocacy, and domestic violence.

“We are committed to promoting women in the legal field,” said Kristen Pursley, WLAM Foundation President and Managing Shareholder at the Dobrusin Law Firm. “As a mother and non-traditional law student, Nichole demonstrates the courage and resolve to pursue her dream, not only for herself but also as an example to her children. It is our privilege to celebrate her with the Dobrusin Law Firm scholarship.”

Katherine Pacynski Concludes Her Tenure as President of the Women’s Bar Association

Thursday, May 27, 2021, marked the end of Dobrusin Law Firm shareholder Katie Pacynski’s presidency of the Women’s Bar Association. The WBA serves as the Oakland Region of the Women Lawyers Association of Michigan and promotes improvements in the administration of justice, enhances relations between the legal profession and the public, secures the rights of women in society, advances the interests of women in the legal profession, and advocates equality and social justice for all people.

At the Women’s Bar Association’s virtual Annual Meeting, Judge Debra Nance swore in the new board, and Katie handed the gavel to the incoming President. Katie previously served as Recording Secretary, Vice President, and President-Elect, and now joins Dobrusin shareholders Kristen Pursley and Erin Klug in adding WBA Past President to her list of accomplishments.

The Dobrusin Law Firm has always encouraged its people to be active in the community. Katie is a shining example; she will continue to be on the Executive Board of WBA as the Immediate Past President, and she is an active member of the Michigan Intellectual Property American Inn of Court.

Contact Information

The Dobrusin Law Firm
29 W. Lawrence St.
Suite 210
Pontiac, MI 48342

Phone: 248-292-2920
Fax: 248-292-2910
Map & Directions