Under unusual circumstances, CAFC re-affirms that conception does not require understanding how or why an invention works
| December 21, 2011
Teva Pharmaceutical Industries v. AstraZeneca Pharmaceuticals and IPR Pharmaceuticals
CAFC, December 1, 2011
Panel: Rader, Linn and Dyk. Opinion by Linn.
Summary
The CAFC has re-affirmed that in order to establish conception of one’s invention, it is only necessary for the inventor to appreciate what the invention is, not how or why the invention works. In this case, it was only required that the inventor understand the contents of a drug formulation, and it was not necessary to understand the stabilizing function of one compound of the formulation. This principle is relatively non-controversial, but is presented in the context of the unusual strategy of conceding infringement even though the accused product did not meet one claim limitation, in order to attack the patent on §102(g) grounds.
CAFC Decision Reaffirms In Re Swanson while Dissent Raises Constitutional Questions Over Res Judicata and Issue Preclusion
| December 14, 2011
In Re Construction Equipment Company, U.S. Court of Appeals for the Federal Circuit 2010-1507
Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences.
(Reexamination No. 90/008,477)
Decided: December 8, 2011
__________________________
Summary
Court gives a brief precedential decision affirming a finding of obviousness for a much fought over patent. The decision is more a re-affirming of In re Swanson given the long litigation history of the patent-at-issue than a decision on legal merits of the BPAI’s finding of obviousness. The lengthy dissent of Judge Newman is highly critical of allowing a re-examination of a patent that had been hotly litigated for years in the judicial branch with an opposite outcome.
Quick comparison between US and JP prior art qualification
| December 8, 2011
“International Harmonization” may be a key word in 2011 in IP industry. As with the patent reform act passed by Congress in September, JP counterpart was updated in June. Thanks to efforts and big challenges done by two countries, basic requirements for patentability, especially prior art qualification, would be similar between these two countries from March 16, 2013 (effective date of the patent reform act in U.S.). However, several differences still exist and we cannot ignore them:
1. 102(a)(2) prior art can be qualified as prior art for obviousness (JP: only anticipation).
2. Applicants can rely on a public disclosure date to antedate 102(a)(2) prior art (JP: No!).
3. Applicants may have one-year grace period (before first filing) after the first disclosure (JP: must file JP application within 6 months).
4. Once Applicants publicly disclosed the subject matter, later disclosure by an independent inventor may not bar the patentability (JP: may be qualified prior art).
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CAFC rejects BPAI’s “thrust of rejection” argument
| December 1, 2011
IN RE STEPAN COMPANY
(Reexamination Nos. 90/006,824 and 90/007,619)
(CAFC, October 5, 2011)
(Precedential)
Before DYK, FRIEDMAN, and PROST, Circuit Judges. PROST, Circuit Judge.
Summary
Patentee appeals the Examiner’s final rejection on reexamination. On appeal, the BPAI affirms the Examiner’s obviousness rejection for essentially the same reasons, but treats the primary reference as prior art under §102(a) in contrast to the Examiner’s reliance on the primary reference as prior art under §102(b) in the Examiner’s answer. However, the BPAI does not issue a new ground of rejection, since the thrust of the rejection was the same as the Examiner’s rejection. The Patentee appeals to the CAFC asserting the need for a full and fair opportunity to litigate the BPAI’s actual basis of rejection. The CAFC rejects the BPAI’s thrust of the rejection argument, vacates the BPAI’s decision and remands with instructions to designate its rejection as a new ground of rejection.
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