Revisiting Therasense, CAFC finds that an inventor’s subjective belief that submission of documents was unnecessary may not be sufficient to avoid a showing of intent to deceive
| April 18, 2012
Therasense判決に基づくCAFC判決；書類のIDS提出は必要ではないとする発明者の主観だけでは欺瞞の意図の立証を避けるのには十分ではないかもしれない。
Aventis Pharma S.A. and Sanofi-Aventis U.S. LLC v. Hospira Inc. and Apotex Inc.
April 9, 2012
Panel: Linn, Dyk, and Prost; Opinion by Prost
Summary:
The court found that the patents were invalid over withheld references, and unenforceable for inequitable conduct.
If the patentee did not narrow the ordinary meaning of a claim term by either acting as its own lexicographer or disclaiming claim scope either in the specification or during prosecution, that claim term cannot be interpreted more narrowly than its ordinary meaning.
If the claims at issue are found invalid over a withheld reference under the clear and convincing evidence standard, then the withheld reference is found but-for material under the preponderance of evidence in Therasense; in this case, the materiality requirement was met since the patents were invalid based on the withheld references.
The witness’ explanation that that he believed he did not need to disclose the references to the PTO may not be sufficient to show that there was no specific intent to deceive the PTO because that finding was not the single most reasonable inference that could be drawn, unless the testimony is credible and the evidence presented is supported. The reference disclosing the information that shaped the inventive thinking should be cited, and there is no justification for telling the PTO about the prior art disclosing the problem an inventor examined while concealing key prior art disclosing the solution he chose.
Tags: claim construction > inequitable conduct > intent to deceive > materiality
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
| 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.
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
| 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.
Tags: Delay due to regulatory review > Expiration > FDA > patent term > Patent Term Extension > PTE
Unexpected results, not disclosed in the specification, of a compound may overcome a prima facie case of obviousness
| 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.
Tags: comparative results > interference > obviousness > secondary considerations > unexpected data
In a dispute over a patent licensing agreement, CAFC refuses to deny enforcement of an arbitration clause based on a technicality
| March 29, 2012
Promega Corporation et al. v. Life Technologies Corporation et al.
March 28, 2012
Panel: Newman, Dyk. Opinion by Dyk. Dissent by Moore.
Summary
Despite an oversight relating to transfer of a patent licensing agreement during a licensee’s merger proceedings, the Federal Circuit held that the licensee retained its right to demand arbitration in a dispute with a sub-licensee. Although the licensee ultimately did not suffer any negative legal consequences due to this oversight, this case provides a good reminder to corporate IP counsel to carefully review all tech transfer agreements during mergers or reorganizations. Here, a single letter to the sub-licensee could have saved the licensee from significant distraction.
MAYO v. PROMETHEUS 米国最高裁判決
| March 23, 2012
No. 10–1150. Argued December 7, 2011—Decided March 20, 2012
For an English discussion of Mayo v. Prometheus, please click here.
背景
Prometheus Laboratories（以下、Prometheus）は、自己免疫疾患を治療するためのチオプリン（thiopurine）ドラッグに関する2つの特許（U.S. Patent No. 6,355,623、No.6,680,302）の独占的使用権を有する。特許クレームは、チオプリンが投与された患者の血中の代謝物量を測定し、それに合わて投与量を調整する方法に関するものである。
Tags: §101 > bilski > biotech > diagnostics > law of nature > patent eligible subject matter > Supreme Court
The threshold to acquiring intervening rights by reexamination requires new or amended claim language
| March 21, 2012
Marine Polymer Technologies, Inc. v Hemcon, Inc. (en banc)
March 15, 2012
Panel: Rader, Newman, Lourie, Bryson, Gajarsa, Linn, Dyk, Prost, Reyna and Wallach (en banc)
Opinion for the court by Lourie. Rader, Newman, Bryson and Prost join in full and Linn joins in part II (Intervening Rights)
Opinion for the dissent by Dyk. Gajarsa, Reyna, and Wallach join in full and Linn joins in parts I-II (Claim construction, dismissing HemCon motion for JMOL and/or new trial)
Summary:
Based on statutory interpretation of 35 U.S.C. §307(b), the Majority held that the threshold requirement for acquiring intervening rights is that there must be amended or new claims that did not exist in the original patent but have been found to be patentable during reexamination. The CAFC held that amended means to make formal changes to the actual language of a claim. A claim is not amended merely because the scope of the claim has been altered by arguments presented during reexamination.
Tags: claim construction > damages > en banc > intervening rights > re-examination > reexamination
Supreme Court strikes down diagnostic method claims as non-patent-eligible subject matter
| March 20, 2012
Mayo Collaborative Services v. Prometheus Laboratories
March 20, 2012
Supreme Court, 9-0, opinion by Justice Breyer
Summary
Although we typically cover the CAFC in this blog, today we will be visiting the Supreme Court. The Supreme Court unanimously ruled that the diagnostic method claims in this highly-anticipated case were invalid as failing to comply with 35 U.S.C. §101. In short, the Court ruled that a claim reciting a diagnostic method (which is inherently based upon a law of nature) that applies only conventional, known steps is invalid.
Tags: §101 > bilski > biotech > diagnostics > law of nature > patent eligible subject matter > Supreme Court
Interpretation of statutory two-year time limit for enlarging the scope of claim in a continuing reissue application filed after the two-year window
| March 14, 2012
In re Erik P. Staats and Robin D. Lash
March 5, 2012
Panel: Dyk, O’Malley and Reyna. Opinion by Dyk. Concurrence by O’Malley.
Summary:
In 1999, a patent was issued to Staats (assigned to Apple Computer) based on an application for his invention regarding isochronous data transfer in a computer. The patent discloses two embodiments. Staats then filed a first reissue application within two years from the issue date of the patent, broadening the scope of claims related to a first embodiment. Outside the two-year window, he further filed other broadening reissue applications as continuations. In 2007, almost seven years after the original patent issued, the last broadening reissue application was filed, which is related to a second embodiment. The PTO’s board held that the last continuing reissue application was not filed within the two-year window because it was not related to the first embodiment which was timely presented within the two-year window. The CAFC reversed and remanded this case, affirming their precedent case which holds that the statutory two-year limit applies to only the filing date of a reissue application, not to the date that broadened claims are presented.
出願人は、コンピュータのデータトランスファーに関する発明を出願し、特許を取得した。その後、クレーム範囲を広げる再発行特許出願を行った。特許出願の明細書には、発明の2つの態様が開示されていた。最初の再発行特許は第1の態様に関するものであり、審査の結果、再発行特許として発行された。その第1の再発行特許が許可される前に出願人は、継続出願として、第2の再発行出願を行い、さらに第2の再発行出願が許可される前に、第3の再発行出願を行った。この第3の再発行出願には、最初の出願もしくは第1の再発行出願でクレームされていた第1の態様とは異なる第2の態様がクレームされていた。特許庁は、第3の再発行出願は最初の再発行出願とは関係のない発明のクレーム範囲を拡大しようとするものであるから、クレーム範囲の拡大は最初の特許発行日から2年以内にのみ可能であるという米国特許法251条の規定に違反するとして拒絶し、審判部もその拒絶を維持した。CAFCは、審判部の判断は誤りであり、クレームを拡大するための最初の再発行出願が2年以内に行われていたか否かが問題であり、その後の継続再発行出願のクレーム内容が最初の再発行出願のクレーム内容と関係があるか否かは問題ではないと判断した。
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Tags: broadening reissue > reissue > two-year window
CAFC invalidates claims directed to a method of creating a real estate investment instrument as unpatentable abstract idea
| March 7, 2012
Fort Properties, Inc. v. American Master Lease LLC
February 27, 2012
Panel: Prost, Schall and Moore. Opinion by Prost
Summary
American Master Lease (“AML”) threatened Fort Properties with an infringement lawsuit for infringement of U.S. Patent No. 6,292,788 (the ‘788 patent) and Fort Properties filed an action in the U.S. District Court for the Central District of California asking for a declaratory judgment of invalidity. In a decision prior to the Supreme Court’s Bilski v. Kappos decision, the district court granted summary judgment in favor of Fort Properties, finding all claims of the ‘788 patent invalid for failing the machine-or-transformation test. On appeal, the Federal Circuit affirmed – finding the claimed invention unpatentably abstract.
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Tags: §101 > abstract idea > bilski > patent eligible subject matter
