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Newsletters

Fish Federal Circuit Summary Service: Issue #317

March 26, 2008

Newsletters

Fish Federal Circuit Summary Service: Issue #317

March 26, 2008

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Continuation-in-Part Does Not Benefit From 35 USC 121 Safe-Harbor Against Obviousness-Type Double Patenting
Pfizer, Inc. v. Teva Pharmas. USA, Inc.
Click here to download the case
Date: March 7, 2008 Panel: Michel, Dyk, Kennelly (sitting by designation)
Author: Dyk
District Court: D.N.J.
Trial Judge: Lifland
Summary: Fed Cir reverses judgment of non-invalidity based on obviousness-type double patenting, affirms judgment of non-invalidity based on best mode, and affirms ruling of no inequitable conduct. Pfizer asserted three patents related to a broad genus of non-steroidal anti-inflammatory compounds, including the active ingredient for Pfizer’s arthritis drug Celebrex. The ‘068 patent-in-suit related to methods, the ‘165 patent-in-suit related to compositions, and the ‘823 patent-in-suit related to compounds.

Obviousness-type double patenting: In response to a restriction requirement, Pfizer filed a divisional application directed to composition claims that ultimately issued as the ‘165 patent, and filed a continuation-in-part (“CIP”) which ultimately issued as the ‘068 patent. The Fed Cir agreed with Teva that the related ‘165 patent rendered the ‘068 patent invalid for obviousness-type double patenting. First, the court of appeals determined that the safe-harbor provision of 35 USC section 121 only protects divisional applications and does not cover CIP applications: “That safe harbor, by its literal terms, protects only ‘divisional application[s]’ (or the original application) and patents issued on such applications.” Slip op. at 11 (bracket and parentheses in original). Then the Fed Cir determined that the ‘165 patent’s claims were not patentably distinct from the ‘068 patent’s claims-in-suit, and thus failed the obviousness-type double patenting test.

Best mode: The Fed Cir affirmed the lack of a best mode violation because there was no evidence that the inventor intended to use the allegedly concealed information to arrive at a preferred dosage (ed. note: failure to disclose the preferred dosage may constitute a best mode violation according to Bayer AG v. Schein Pharms., Inc., 301 F.3d 1306, 1320 (Fed. Cir. 2002)). Because Teva did not file a counterclaim of invalidity, the Fed Cir declined to decide whether or not Pfizer violated the best mode requirement by disclosing many compounds without teaching how to select the truly valuable compounds.

Inequitable conduct: The Fed Cir agreed that there was no evidence of intent to deceive where (i) a named inventor studied the undisclosed references and credibly believed that they did not disclose the claimed compounds, and (ii) Pfizer had a highly consistent pattern of disclosing relevant references in the prosecution of its patents.

KEYWORDS: OBVIOUSNESS-TYPE DOUBLE PATENTING (YES), DIVISIONAL, CONTINUATION-IN-PART, BEST MODE (NO), INEQUITABLE CONDUCT (NO), INTENT (NO)

Fed Cir Judge Criticizes Colleagues For Misapplying The Broadest Reasonable Construction Standard
In re Buszard
Click here to download the case
Date: September 27, 2007
Panel: Newman, Friedman, Prost (dissenting)
Author: Newman District Court: BPAI
Summary: Fed Cir reverses anticipation finding against an application directed to flexible flame retardant polyurethane foam. The court of appeals ruled that, even under the broadest reasonable interpretation standard, a prior art rigid flame retardant polyurethane foam did not anticipate the claimed flexible foam: “We agree with Buszard that it is not a reasonable claim interpretation to equate ‘flexible’ with ‘rigid,’ or to equate a crushed rigid polyurethane foam with a flexible polyurethane foam. ” Slip op. at 6.

In dissent, Judge Prost argued that the PTO properly gave the disputed term its broadest reasonable interpretation and that substantial evidence supported the BPAI’s determination, including evidence that crushed rigid polyurethane foam could be considered “flexible” foam. She also criticized the applicant, and the majority, for not providing any evidence that the disputed term has a specific meaning in the art as argued on appeal.

KEYWORDS: ANTICIPATION (NO), BROADEST REASONABLE CONSTRUCTION

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