Anticipation : CAFC Alert

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.

Summary:

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.


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CAFC clarifies the presumption that prior art is enabled after In re Antor Media Corp (Fed. Cir. 2012)

Michael Caridi | April 10, 2013

In re Steve Morsa

April 5, 2013

Panel:  Rader, Lourie and O’Malley.  Opinion by O’Malley.

Summary

The Board of Patent Appeals and Interferences (“Board”) had affirmed an Examiner’s finding that a short press release, relied on for an anticipation rejection, was enabling.  In making its decision, the Board had held that arguments alone by the applicant were insufficient to rebut the presumption that a reference was enabling.  The CAFC found that the Board and the examiner had failed to engage in a proper enablement analysis of the reference and vacated the anticipation finding.


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Prior Art Reference Must Disclose Arrangement of Elements, Not Merely Each Discrete Element

Thomas Brown | March 20, 2013

SynQor, Inc., v. Artesyn Technologies, Inc., et al.

March 13, 2013

Panel:  Rader, Lourie and Daniel (Chief District Judge).  Opinion by Rader.

Summary

SynQor sued Artesyn Technologies, Inc., and eight other power converter manufactures (Defendants) for infringement of five of SynQor’s U.S. Patents in the United States District Court (“DC”) for the Eastern District of Texas.  The DC granted partial summary judgment of infringement of against the Defendants.  The DC denied Defendants’ motion for judgment as a matter of law (JMOL) or a new trial after the jury found all asserted claims infringed, not invalid, and awarded lost-profits of $95 million.  On appeal, the CAFC affirmed the DC based on a review of the record evidence.


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Board Should Consider Appellee’s Grounds For Affirming Rejection Presented To Examiner During Reexamination, Even If Grounds Had Not Been Raised On Appeal

Bill Schertler | February 6, 2013

Rexnord Industries v. Kappos

January 23, 2013

Panel:  Newman, Lourie, Prost.  Opinion by Newman.

Summary:

In 2003 Habasit filed an infringement suit against Rexnord in the United States District Court for the District of Delaware for infringement of its U.S. Patent No. 6,523,680 (the ’680 patent).  Rexnord then requested inter partes reexamination of the ’680 patent, and the district court stayed the infringement suit pending completion of reexamination.

On reexamination, the examiner held all of the claims in the ’680 patent unpatentable for anticipation and obviousness.  Habasit appealed the examiner’s decision to the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board).  On appeal, the Board reversed the examiner’s decision and held the claims patentable.

Rexnord appealed to the CAFC.  The CAFC affirmed that the claims are not anticipated, and reversed the Board’s determination that the claimed invention is not obvious in view of certain prior art.


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Prior art can show what the claims would mean to those skilled in the art

Sung-Hoon Kim | December 5, 2012

ArcelorMittal v. AK Steel Corp.

November 30, 2012

Panel: Dyk, Clevenger, and Wallach.  Opinion by Dyk.

Summary:

The U.S. District Court for the District of Delaware held that defendants AK Steel did not infringe plaintiffs ArcelorMittal’s U.S. Patent No. 6,296,805 (the ‘805 patent), and that the asserted claims were invalid as anticipated and obvious based on a jury verdict.

ArcelorMittal appealed the district court’s decision.  On appeal, the CAFC upheld the district court’s claim construction in part and reverse it in part.  With regard to anticipation, the CAFC reversed the jury’s verdict of anticipation.  With regard to obviousness, the CAFC held that a new trial is required because the district court’s claim construction error prevented the jury from properly considering ArcelorMittal’s evidence of commercial success.

미국 델라웨어주 연방지방법원 (U.S. District Court for the District of Delaware)은 원고 (ArcelorMittal)가 피고 (AK Steel)를 상대로 낸 특허 침해 소송에서 원고의 특허 (U.S. Patent No. 6,296,805)가 예견가능성 (anticipation) 및 자명성 (obviousness) 기준을 통과하지 못하였다는 배심원의 판단을 바탕으로 피고가 원고의 특허를 침해하지 않았다고 판결하였다.

이에 불복하여 원고는 연방항소법원 (U.S. Court of Appeals for the Federal Circuit)에서 상고 (appeal) 하였으며, 연방항소법원은 지방법원의 청구항 해석 (claim construction)에 대해 일정 부분은 확인하였으나, 나머지 부분은 번복하였다.

예견가능성과 관련하여 연방항소법원은 배심원의 예견가능성 판단과 다른 결정을 내렸다.

자명성과 관련해서는 연방지방법원의 잘못된 청구항 해석으로 인하여 배심원이 원고의 상업적 성공 (commercial success) 증거를 고려하지 않았기때문에 재심 (new trial)이 필요하다고 판결하였다.


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CAFC does not find means-plus-function in a “height adjustment mechanism”

Scott Daniels | November 7, 2012

Flo Heathcare Solutions v. Kappos

October 23, 2012

Panel: Newman, Plager, and Wallach.  Opinion by Wallach.

PROCEDURAL SUMMARY

The patentee sued the defendant for infringement.  The defendant then requested inter partes reexamination of the patent.  The trial judge stayed the infringement action, pending completion of the reexamination.  The patent reexamination examiner and the Patent Office Board rejected the claims as being anticipated by the prior art.  On appeal, the CAFC disagreed with the PTO Board’s claim construction; but even under the CAFC’s claim construction, it found that the claims were anticipated and therefore affirmed the PTO’s rejection of the claims


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Like prior art patents, potentially anticipatory non-patent printed publications are presumed to be enabling

Cindy Chen | October 5, 2012

In re Antor Media Corporation

July 27, 2012

Panel: Rader, Lourie and Bryson. Opinion by Lourie.

Summary

Antor Media Corp. appeals from the decision of the Board of Patent Appeals and Interferences rejecting on reexamination the claims of its patent as anticipated and obvious over four prior art references.  The prior art references include three printed publications and one U.S. patent.  The Board found that two of the printed publications anticipated the claims in Antor’s patent. Here, Antor argues that since the printed publications are not enabling, they could not have anticipated the claims. Antor further argues that unlike prior art patents, prior art printed publications are not presumptively enabling.  The principal issue on appeal is therefore whether the presumption that prior art patents are enabling can be logically extended to printed publications. The Federal Circuit answers that it can, holding that a prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee.


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Lack of demonstrated criticality of narrowly claimed range fails to overcome anticipation rejection based on broadly disclosed prior art range

Ken Salen | February 22, 2012

ClearValue, Inc. v. Pearl River Polymers, Inc.

February 17, 2012

Panel:  Prost, Schall and Moore.  Opinion by Moore.

Summary

ClearValue accused Pearl River of infringing U.S. Patent No. 6,120,690 (’690 patent).  The jury found that the ’690 patent was valid and indirectly infringed.  The 5th Circuit District court denied Pearl River’s subsequent motions for judgment as a matter of law (JMOL) of invalidity and noninfringement of the ‘690 patent. Pearl River appealed the district court’s denial of its motions for JMOL.  Holding that the jury’s verdict was not supported by substantial evidence, the CAFC reversed the denial of the motion for JMOL of invalidity (i.e., the CAFC held the patent-in-suit invalid), concluding that a prior art limitation of “less than 150 ppm” anticipates a claimed range of “less than or equal to 50” unless criticality of the narrowly claimed range is demonstrated.


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