Post-filing clarification of an ambiguous feature in a pre-filing reference is not sufficient to establish inherent properties of the feature in the earlier publication
| July 31, 2018
Endo Pharmaceuticals Solutions et al. v. Custopharm Inc.
July 16, 2018
Before Moore, Linn and Chen. Opinion by Chen.
Summary
Custopharm argued that Endo’s patents were invalid due to anticipation or obviousness of three features of a drug and its administration: the dosage, the content of the vehicle, and the administration schedule. The arguments regarding the dosage were rejected on the grounds that they relied on a lesser-used industry treatment guideline. The arguments regarding the vehicle were rejected on the grounds that they relied on an improper inherency position, and that it would not have been obvious to modify the vehicle in view of a reference teaching a similar vehicle in a different context. Finally, the arguments regarding the administration schedule were rejected on the grounds that they relied upon an unsupported claim construction position, as well as an improper combining of the teachings of two references.
To read, or not to read an unrecited limitation into a patent claim, that is a question
| July 26, 2018
Blackbird Tech LLC v. ELB Electronics, Inc.
July 16, 2018
Before Prost, Moore and Reyna. Opinion by Moore. Dissenting opinion by Reyna.
Summary
Finding no suggestion in the specification or prosecution history that the disputed unrecited limitation is important in any way that would merit reading it into the patent claim in dispute, the Federal Circuit vacated district court’s entry of judgment of noninfringement based on the contrary claim construction, and remanded the case to the district court for further proceedings. Dissenting opinion expressed totally opposite view on the issue, and affirmed the district court’s judgment.
Spray your way to non-obviousness: Patents directed to intranasal delivery of migraine drugs not obvious where prior art would have resulted in reduced efficacy
| July 11, 2018
Impax Laboratories, Inc. v. Lannett Holdings, Inc.
June 28, 2018
Before Lourie, Dyk, and Taranto. Opinion by Lourie.
Summary
This case involved a “close” question of obviousness that was ultimately decided in no small part by the perceived relative credibility of the parties’ experts. The Federal Circuit deferred to the district court’s preference for the patent owner’s expert, and consequently, the district court’s determination that, where the efficacy of a drug’s active ingredient depended not on itself, but on its more potent metabolite, a person of ordinary skill in the art would not have found it obvious to pursue a proposed combination of the prior art that would reduce the metabolite’s production.
