LeeWright : CAFC Alert

Amending to exclude a species via a negative limitation may violate the written description requirement

Lee Wright | August 7, 2013

In re Bimeda Research & Development Limited

July 25, 2013

Panel:  Rader, Clevenger, Prost.  Opinion by Clevenger.  Concurrence by Rader.

Summary: 

The court held a negative limitation to exclude a genus does not provide 112, first paragraph written description support to claim a negative limitation that excludes a species, which species was never mentioned in the application.


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A District Court application of Therasense

Lee Wright | February 28, 2013

Caron and Spellbinders Paper Arts Company, LLC vs. QuicKutz, Inc.

United States District Court for the District Of Arizona

November 13, 2012, Decided

 

SUMMARY

In Therasense, Inc. v. Becton, Dickinson & Company, 649 F.3d 1276 (Fed. Cir. 2011) the CAFC ruled that District Courts must find intent and materiality separately, i.e., weighing the evidence of intent to deceive independently from analysis of materiality.

Here, in one of the few cases since Therasense, a District Court applies separate analyses for each of intent and materiality.  In addition, the District Court applied the exception to the but-for materiality requirement in cases of affirmative egregious misconduct.

Knowingly not naming the inventors was held to be inequitable conduct.

Declarations by persons not skilled in the art were held to be inequitable conduct.

Declarations that did not disclose financial relationships with the inventors were held to be inequitable conduct.

A Declaration where the Declarant, when he made the declaration, did not know whether the statements in the declaration were true or not was held to be inequitable conduct.


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Another per se rule bites the dust. A reference that discloses a range encompassing a somewhat narrower claimed range may not be sufficient to establish a prima facie case of obviousness

Lee Wright | April 12, 2012

Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.

August 23, 2011

Panel:  Lourie, Plager and Dyk.  Opinion by Lourie.  Concurrence-in-part and dissent-in part by Dyk.

Summary:

This article concludes a three-part series regarding this important case from last year.   For part 1, click here.  For part 2, click here.  This final article discusses the following questions:

Question 1:  Does a broad range necessarily render obvious a narrower range falling within that broader range?

Answer 1:  No.

Question 2:  Do all minor chemical differences always lead to a conclusion of obviousness?

Answer 2:  No.


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CAFC holds all the claims of a patent have the same expiration date, whether the claims are drawn to the product subject to patent term extension or not

Lee Wright | April 11, 2012

Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.

August 23, 2011

Panel: Lourie, Plager and Dyk.  Opinion by Judge Lourie.  Concurrence-in-part and dissent-in part by Dyk.

Summary:

Today, we bring you the second in a series of three articles regarding an important case from last year.   For part 1, click here.  This article discusses the following question:

Question: Where a patent has been granted an extension of term due to regulatory review, is there a different expiration date for the claims that were the subject to the regulatory review and the claims that do not claim the approved product?

Answer:  The expiration date is not determined on a claim by claim basis.

A patent, and therefore all of the claims in the patent, have the same expiration date, which is the expiration date as extended by patent term extension.


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Unexpected results, not disclosed in the specification, of a compound may overcome a prima facie case of obviousness

Lee Wright | April 2, 2012

Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.

August 23, 2011

Panel:  Lourie, Plager and Dyk.  Opinion by Lourie.  Concurrence-in-part and dissent-in part by Dyk.

Summary:

Today, we bring you the first in a series of three articles regarding an important case from last year.   This article discusses the following question:

Question:  Can evidence of unexpected results of a compound be used to overcome a prima facie case of obviousness, where the unexpected result is not disclosed in the specification as originally filed?

Answer: Yes.

Evidence of unexpected results to a property of a compound, where the unexpected result is not disclosed in the specification as originally filed, can be used to overcome a prima facie case of obviousness.


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