Can an open-ended claim range be enabled?
| August 22, 2012
Magsil Corp. and MIT v. Hitachi Global
August 14, 2012
Panel: Rader, O’Malley, Reyna. Opinion by Rader.
Summary
The U.S. District Court for the District of Delaware granted summary judgment finding claims 1-5, 23, 26 and 28 of appellants’ U.S. Patent No. 5,629,922 (the ‘922 patent) invalid as a matter of law for lack of enablement and therefore non-infringed. At issue was whether the specification enabled the broad scope of the claimed “open-ended” range of values having a lower threshold, but no upper limit, defined by “a change in the resistance by at least 10% at room temperature”.
Magsil appealed the district court’s decision. On appeal, the CAFC affirmed the district court’s finding that claims 1-5, 23, 26 and 28 of the ‘922 patent are invalid for lack of enablement.
Tags: criticality of ranges > enablement > open-ended claim range > ranges
Presumption of validity attaches to all issued patents, even incorrectly issued patents
| July 5, 2012
Sciele Pharma Inc. v. Lupin Ltd.
July 2, 2012
Panel: Lourie, Prost, Moore. Opinion by Moore
Summary
Shionogi (new name for Sciele Pharma) obtained US Patent No. 6,866,866 (“the ‘866 patent”) which included broader claims that were intended to be cancelled in favor of narrower claims in response to a rejection. Shionogi brought suit against Lupin for infringement of the ‘866 patent including claims that were to be cancelled. Lupin began selling the alleged infringing product and Shionogi moved for a preliminary injunction. The District Court granted Shionogi’s request for preliminary injunction and Lupin appealed. On appeal, the CAFC stated that even though the ‘866 patent issued with the incorrect claims, the ‘866 patent nonetheless had a presumption of validity and that the clear and convincing evidentiary standard applied for invalidating the patent. The CAFC also stated that there is not a heightened standard just because references were considered by the PTO. With the proper clear and convincing evidentiary standard applied to the ‘866 patent, the CAFC stated that Lupin has raised a substantial question of invalidity, and thus, the preliminary injunction is vacated.
Tags: clear and convincing standard > enablement > injunction > obviousness > preliminary injunction > presumption of validity > validity
