Pfizer v. Ranbaxy: how NOT to write dependent claims

Wednesday, July 13, 2011
Time: 1pm ET

Occasionally even one skilled in the esoteric art of crafting U.S. patent claims that meet the substantive statutory requirements (enablement, novelty, non-obviousness, etc.) will stub his or her metaphorical toe on "mere" matters of form. This occurred, in a spectacularly catastrophic fashion, to the drafter of Pfizer's now-infamous claim 6 in the 2006 Pfizer v. Ranbaxy Federal Circuit case. With billions in Lipitor® atorvastatin sales hanging in the balance, the Federal Circuit held for the first time that inadvertent failure to observe the strictures of 35 USC 112, paragraph 4, regarding proper claim dependency can slay an otherwise healthy claim. Understanding the problem is important not only for prosecutors who want to avoid the same trap, but also for litigators who may someday be handed a case with such a claim lurking in it.

In this webinar, we will:

  • Review the Pfizer v. Ranbaxy case and its ill-begotten claim 6
  • Parse what 35 USC 112, paragraph 4, really says, and how the US Patent and Trademark Office interprets it
  • Burn the lesson into memory with multiple examples of good and bad dependent claims

Janis Fraser, Ph.D., Principal, Boston

Please click here to view the PowerPoint presentation from the webinar.

To listen to the audio for the Pfizer v. Ranbaxy webinar, please click here.