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IP LitigationFederal Circuit

To Add Claims to a Separate Invention on Reissue, the Specification Must Clearly and Unequivocally Disclose the Newly Claimed Invention as a Separate Invention

December 23, 2014

IP LitigationFederal Circuit

To Add Claims to a Separate Invention on Reissue, the Specification Must Clearly and Unequivocally Disclose the Newly Claimed Invention as a Separate Invention

December 23, 2014

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Antares Pharma Inc. v. Medac Pharma Inc., ___ F.3d ___ (November 17, 2014) (DYK, Reyna, Taranto) (D. Del.: Robinson) (3 of 5 stars)
Federal Circuit affirms denial of preliminary injunction in a patent case involving injection devices used to self-administer pharmaceuticals, holding new claims added during reissue invalid based on the “original patent” requirement of 35 U.S.C. § 251.

Original Patent: The Federal Circuit held that the Supreme Court’s decision in U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668 (1942) provided the definitive test for the original patent requirement of § 251 despite changes to the language of the reissue statue in the 1952 Patent Act, noting that “[t]here is nothing in the statutory language or legislative history suggesting that Congress intended to overturn the long line of Supreme Court cases culminating in Industrial Chemicals by [the] change in language,” slip op. at 11, and that both the regional circuits and CCPA continued to apply Industrial Chemicals after 1952. The Federal Circuit further held that the original patent requirement was “analogous to the written description requirement,” but that the two standards are not coextensive; in order to add claims to a separate invention during reissue “the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Id. at 15. The court held that the asserted reissue claims, which focused on combinations of safety features for injection devices, did not satisfy that standard because (1) the specification described the safety features only in combination with the jet injection invention claimed in the original claims, but the reissue claims were not limited to jet injectors, and (2) the specification merely described the safety features serially rather than in the “particular combinations” claimed during reissue.

Preliminary Injunction: The Federal Circuit affirmed denial of Antares’ motion for a preliminary injunction, holding that because the asserted claims were invalid under § 251, Antares could not show a likelihood of success on the merits.


The opinions expressed are those of the author(s) and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes and is not intended to be and should not be taken as legal advice.

Related Tags

CAFC Summary
Preliminary Injunction
Section 251
Original Patent
Federal Circuit

Blog Authors

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Chris W. Dryer | Associate

Chris Dryer’s practice emphasizes patent litigation and appeals. He has experience litigating intellectual property cases in the U.S. International Trade Commission, federal district courts, and the United States Court of Appeals for the Federal Circuit involving a wide array of...

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