Public use bar inappropriate when participants in clinical trials do not discern specifics of new product
Sung-Hoon Kim | May 22, 2013
Dey, L.P. v. Sunovion Pharmaceuticals, Inc.
May 20, 2013
Panel: Bryson, O’Malley, and Newman. Opinion by Bryson. Dissent by Newman.
The Federal Circuit reversed and remanded the holding of the District Court that some of Dey’s patents were invalid because a Sunovion’s clinical trial, where Sunovion tested its own product, constituted an invalidating public use. The Federal Circuit determined that although some of test samples were lost and clinical trial was not perfectly confidential, Sunovion’s clinical trial is not an invalidating public use as long as participants do not recognize the specifics of a new drug.
연방지방법원 뉴욕 남부지원(U.S. District Court for the Southern District of New York)은 Sunovion의 임상실험 (clinical trial)이 공용 (public use)에 해당된다고 판단하여, Dey의 특허가 무효 (invalid)라도 판결하였다.
이에 불복하여, 원고는 연방항소법원 (U.S. Court of Appeals for the Federal Circuit)에 상고 (appeal)하였다. 연방항소법원은 임상실험 도중 test sample이 분실되었거나 임상실험이 완벽히 비공개로 진행되지 않았더라도 실험참가자가 신약에 대한 자세한 정보를 모른다면Sunovion의 임상실험은 공용에 해당되지 않는다고 판결하였다.
John Kong | May 13, 2013CLS Bank v. Alice Corporation (en banc)
May 10, 2013
After the Federal Circuit issued its en banc decision on May 10, 2013 in CLS Bank v. Alice Corp, the patent owner Alice Corp must be feeling like Alice in Alice in Wonderland, bewildered and frightened by the fantastical situation in which they find themselves:
(1) “bewildered” because an equally divided Federal Circuit affirmed the district court’s holding that Alice’s claimed system to tangible machine components including a first party device, a data storage unit, a second party device, a computer, and a communications controller, programmed with specialized functions consistent with detailed algorithms disclosed in the patent, constitutes a patent ineligible “abstract idea;”
(2) “frightened” because, as Judge Moore puts it, “this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents” (Moore Op. at 2); and
(3) “fantastical” because, as Judge Newman puts it, the en banc court was tasked to provide objective standards for 35 USC §101 patent-eligibility, but instead has “propounded at least three incompatible standards, devoid of consensus, serving to add to the unreliability and cost of the [patent] system…[such that] the only assurance is that any successful innovation is likely to be challenged in opportunistic litigation, whose result will depend on the random selection of the panel” (Newman Op. at 1-2).
Scott Daniels | May 9, 2013
Biosig Instruments v. Nautilus
April 26, 2013
Panel: Wallach, Schall and Newman. Opinion by Wallach. Concurrence by Schall.
The Court of Appeals for the Federal Circuit rarely finds patent claims to be so indefinite that the they are invalid under 35 U.S.C. § 112, ¶ 2. This historical proclivity was on display last in the CAFC’s decision in Biosig Instruments V. Nautilus. There, the Court reversed a summary judgment of invalidity for indefiniteness, concluding that the claim was “amenable to construction” and not ‘insolubly ambiguous.”
If Alleged Infringer Doesn’t Cross-Appeal Validity of Narrowly Interpreted Claim, He May Not Challenge Validity of Later Broadly Construed Claim
Sadao Kinashi | May 8, 2013
Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc.,
April 19, 2013
Panel: Lourie, Dyk and Reyna. Opinion by Lourie. Dissent by Dyk.
Based on narrow claim construction, the district court issued a prior judgment that patent claims were valid but not infringed either literally or under the doctrine of equivalents. Lazare Kaplan (Patentee) appealed the judgment of non-infringement. But Photoscribe (Alleged Infringer) did not cross-appeal the judgment of validity. On appeal, CAFC broadly interpreted the claims and vacated the judgments of no infringement. The issue of infringement was remanded to the district court.
On remand, Photoscribe moved for summary judgment of invalidity based on the CAFC’s broad claim construction, and moved for relief from the district court’s prior judgment of validity under Rule 60(b). The district court granted both of Photoscribe’s motions. Lazare Kaplan appealed. CAFC reversed both district court decisions holding that the district court abused its discretion by granting relief under Rule 60(b).
差戻審で、Photoscribe社は、CAFCの解釈に基づいて特許クレームの無効を主張し、一方、特許有効の確定判決に関し、それに拘束されない連邦民事訴訟規則60(b)に基づく救済を求めた。地裁はPhotoscribe社の両方の申立てを認めた。CAFCは地裁が規則60(b)に基づく救済を認めたことは裁量権を逸脱するとし、また、特許クレーム無効判決を破棄した。Next Page »