Case No. 2013-1167 (Rader, Lourie, Moore)
Almost two years ago the Federal Circuit decided Aspex v. Marchon, a case including, among much else, a rather interesting treatment of functional claim terms like “adapted to” and “configured for.” There, the court construed functional terms to require more than mere capability of performing the recited function, but actual design intention to perform the function. Given the litigation context of that case, it was not clear whether functional language would be so weighty in overcoming a prior art rejection before the USPTO under its BRI standard. Comes now In re Giannelli to dispel this caution and demonstrate how functional language can require more than mere capability in the prior art to be rejected in prosecution.
Raymond Giannelli, through fitness machine company Cybex, applied for a patent on a rowing machine in US application 10/378,261. The claims were rejected as obvious and anticipated over Giannelli’s own prior art chest press invention in US Patent 5,997,447. Giannelli appealed, and the Board affirmed the § 103 rejection to the following functional-language-based claim: Read more …
Case No. 2013-1490 (Dyk, Moore, Taranto) (nonprecedential)
Here’s an easy New Year’s resolution: don’t use “the present invention” to describe example embodiments in a patent specification. Based on the troubles caused in AstraZeneca v. Hanmi, it’s a good practice throughout patent preparation and prosecution to red-flag “invention” anytime it would appear. The case is a pretty straightforward reminder of how even broadly, well-differentiated claims can be pared in scope by narrow specification drafting using terms like “the present invention.”
AstraZeneca owned US Patents 5,714,504 and child 5,877,192 covering the active ingredient in Nexium, the magnesium salt of esomeprazole, a proton pump inhibitor useful for reducing stomach acid. Hanmi sought approval from the FDA to market a similar drug using the strontium salt of esomeprazole as a generic. AstraZeneca brought suit under § 271(e)(2)(A), alleging that the strontium esomeprazole formulation infringed the following broad claim: Read more …
Case Nos. 2013-1047+ (Prost, O’Malley, Taranto)
Avoiding specification-bound claim constructions (through careful claim drafting or luck of the draw on judges) may just set one up for a different failure. As illustrated by Synthes v. Spinal Kinetics, achieving a plain meaning claim construction that exceeds disclosed examples may still trigger invalidation for lack of written description, even in a mechanical setting. The case thus provides general lessons for complying with § 112(a) and specific cautions when trying to capture competitive scope with broadening amendments in prosecution.
Synthes owned US Patent 7,429,270 directed to implants that could replace intervertebral discs, the cartilaginous shock absorbers between vertebrae. Synthes asserted the ‘270 patent against Spinal Kinetics (called “SK” in the opinion) for manufacturing M6-C and M6-L discs, alleging they infringed the following claim added during prosecution of the ‘270 patent: Read more …
Brief mentions of IP stories floating around in the past few weeks that might be of interest.
-Supreme Court grants cert in CLS Bank. I would say that this will only further muddle patentable subject matter doctrine, but I’m not sure the area can get any less clear. [SCOTUSBlog]
-The House has passed Rep. Goodlatte’s Innovation Act with slight modification since its introduction. Its prospects in the Senate, where competing legislation is already pending, is less certain. [PatentlyO]
-Based on the oral arguments and Judge Plager’s presence on the panel, the Federal Circuit looks poised to reach the merits of the USPTO’s unique indefiniteness standard from Ex Parte Miyazaki. [In re Packard oral argument]
-CNNMoney ranks “Patent Attorney” the 49th best job in America for 2013. Where does one sign up for the $175,000 median annual salary? [CNNMoney]
-Looking for more even ways to get an appeal designated as a new ground of rejection after Rambus v. Rea? The Federal Circuit also offers up In re Biedermann for your consideration. [PharmaPatents]
-If algorithms aren’t patentable subject matter, perhaps they’ll still find IP usefulness in creating copyrightable subject matter. [Huffington Post]
Case No. 2013-1104 (Rader, Lourie, Moore) (nonprecedential)
Sticking with the theme of obviousness (and psoriasis) as it has recently come up before the Federal Circuit, the nonprecedential In re Eaton provides some further insight into reference incompatibility under § 103. The previous post was skeptical of Leo Pharm. v. Rea’s finding that references could not be combined because of conflicting embodiments, but Eaton provides more palatable facts for overcoming obviousness along these lines. The case also serves as a recent example of the court’s approach on negative claim terms, redefinition of claim terms, and functional claim terms – all in the same claim limitation!
Applicant Eaton came up with a B-vitamin regime to treat psoriasis in US application 11/145,716. Counter to the prevailing supplement trends, Eaton’s formulation did not use anti-oxidants; indeed, anti-oxidants like Vitamin C were excluded from the ‘716 application’s mixtures. The ‘716 application claimed the psoriasis treatment as a method with a negative limitation for the anti-oxidants, as such: Read more …
Case No. 2012-1520 (Rader, O’Malley, Reyna)
After the last post on Broadcom v. Emulex looking at problem-solution treatment under § 103, I wanted to circle back to two other recent Federal Circuit cases on similar topics – Leo Pharm. Prods. v. Rea and Randall Mfg. v. Rea. This post addresses the former case, which is another illustration of the pro-patentability nature of a new problem solved by claims over the prior art. Leo Pharm. Prods. v. Rea further develops the concept that the age of the prior art relative to the claimed invention should be considered in some aspects of the obviousness analysis.
Galderma R&D successfully requested the USPTO to institute inter partes reexam on US Patent 6,753,013 owned by Leo Pharmaceutical. The ‘013 patent disclosed and claimed a psoriasis treatment using vitamin D and a corticosteroid. This combination treatment was well-known in the art, but the ‘013 patent had a new take on the treatment. After discovering that vitamin D and corticosteroids did not keep well in a combined formulation because of different pH values at which they were stable, the inventors of the ‘013 patent discovered some compatible solvents that would work with the two ingredients, including polyoxypropylene 15 stearyl ether (POP-15-SE). That three-way solution was claimed as such: Read more …