DECEMBER 2003 Last The Federal Circuit month at Month at a Glance REWRITING DEPENDENT CLAIMS IN INDEPENDENT FORM TRIGGERS ESTOPPEL Dependent claims that were redrafted into independent form did more than simply add an additional limitation; they further defined and circumscribed an existing limitation for the purpose of putting the claims in condition for allowance. Ranbaxy Pharms., Inc. v. Apotex, Inc. , No. 02-1429 (Fed. Cir. Nov. 26, 2003) . . . . . . . . . . . . . . . .1 35 U.S.C. § 121'S SHIELD APPLIES TO FORMAL PTO RESTRICTION REQUIREMENTS Restriction requirements must provide a clear demarcation between restricted subject matter to allow determination that claims in continuing applications are consonant and, therefore, deserving of § 121's protections. Geneva Pharms., Inc. v. GlaxoSmithKline PLC , No. 02-1439 (Fed. Cir. Nov. 21, 2003) . . . . . . . . . . . . . . . . . . . . .2 DISTRICT COURT DID NOT ABUSE ITS DISCRETION IN AWARDING RULE 11 SANCTIONS AGAINST PATENTEE'S COUNSEL Washington, DC Prior Federal Circuit claim-construction rulings obviated basis for Phonometrics to 202.408.4000 pursue additional defendants. Phonometrics, Inc. v. Economy Inns of Am. , No. 02-1502 (Fed. Cir. Nov. 21, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3 Atlanta, GA 404.653.6400 CLAIM LANGUAGE REQUIRES ORDER FOR RECITED STEPS Had the district court relied exclusively on a dictionary definition or allowed it to Cambridge, MA overcome clear language in the patent itself, its methodology would have been clearly 617.452.1600 wrong. Combined Sys., Inc. v. Defense Tech. Corp. of Am. , No. 03-1251 (Fed. Cir. Nov. 20, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4 Palo Alto, CA 650.849.6600 FACTS CONCERNING COMMERCIAL EMBODIMENT OF INVENTION DO NOT LEAD TO INVALIDITY OR UNENFORCEABILITY Reston, VA District court misapplied both enablement and inequitable-conduct requirements by 571.203.2700 focusing on a commercially viable embodiment rather than a statutory claimed invention. CFMT, Inc. v. YieldUP Int'l Corp. , No. 01-1452 (Fed. Cir. Nov. 12, 2003) . . . . .5 Brussels + 32 2 646 0353 BOARD'S DECISION ON OBVIOUSNESS SUPPORTED BY SUBSTANTIAL EVIDENCE Taipei + 886 2 2712 7001 If the evidence will support several reasonable but contradictory conclusions, the Federal Circuit will not find Board's decision unsupported by substantial evidence simply because it chose one conclusion over another plausible alternative. Tokyo + 03 3431 6943 Velander v. Garner , No. 02-1366 (Fed. Cir. Nov. 5, 2003) . . . . . . . . . . . . . . . . . . . . . . .6 EDITED BY VINCE KOVALICK This publication brings you a synopsis of patent cases decided last month by the United States Court of Appeals for the Federal Circuit based on slip opinions received from the court. You can review and download the full text of each opinion by visiting our website at www.finnegan.com
L A S T M O N T H A T T H E F E D E R A L C I R C U I T Rewriting Dependent Claims in ed in the previously objected-to dependent claims. Independent Form Triggers Ranbaxy's alleged infringing process uses Estoppel acetic acid rather than the specifically recited solvents, and so Apotex moved for a prelimi- Lara C. Kelley nary injunction alleging infringement under the DOE. The district court found that prosecution [Judges: Mayer (author), Clevenger, and history estoppel precluded Apotex's reliance on Bryson] the DOE because: (1) Apotex had submitted a narrowing amendment for reasons related to In Ranbaxy Pharmaceuticals, Inc. v. Apotex, patentability, and (2) Apotex had surrendered Inc. , No. 02-1429 (Fed. Cir. Nov. 26, 2003), the solvents of the same polarity as acetone, name- Federal Circuit affirmed a district court's denial ly, acetic acid. of a preliminary injunction against Ranbaxy On appeal, the Federal Circuit addressed the Pharmaceuticals, Inc. ("Ranbaxy"). issue of whether rewriting a dependent claim in Apotex, Inc. ("Apotex") and Ranbaxy are independent form triggers prosecution history generic drug manufacturers, who both seek to estoppel by first distinguishing its Bose Corp. v. market amorphous cefuroxime axetil, a broad- JBL, Inc. , 274 F.3d 1354 (Fed. Cir. 2001), deci- spectrum antibiotic. Apotex is the owner of sion. The Court observed that Bose had held U.S. Patent No. 5,847,118 ("the '118 patent"), that rewriting a claim to explicitly recite a previ- page 01 which is directed to a process for preparing ously inherent feature did not trigger estoppel, amorphous cefuroxime axetil. Ranbaxy sought but that it had not addressed the issue of a DJ that it does not infringe the claims of the rewriting a dependent claim in independent '118 patent. Apotex counterclaimed and form. The Federal Circuit stated that the cor- moved for a preliminary injunction, arguing rect focus for determining whether a narrowing that Ranbaxy was infringing the claims of the amendment has been made is on whether sub- '118 patent under the DOE. Apotex conceded ject matter that was originally claimed was sur- that there was no literal infringement. Thus, rendered for reasons related to patentability. the sole issue before the district court when The Court found that rewriting the dependent making its decision on the preliminary injunc- claims that recited specific highly polar organic tion motion was Apotex's likelihood of success solvents in independent form further defined on its DOE theory. The district court concluded and circumscribed the existing limitation of that prosecution history estoppel precluded "highly polar organic solvent" for the purpose Apotex's reliance on the DOE. of putting the claims in condition for Apotex's original independent claim was for allowance. a process of making amorphous cefuroxime In addressing whether Apotex could over- axetil using "a highly polar organic solvent," come the presumption of surrender, the Federal which dependent claims further limited to sul- Circuit rejected Apotex's argument that it could foxide, formic acid, or an amide. During prose- not have foreseen that reciting particular sol- cution, the independent claim was rejected vents would constitute a surrender of an obvi- under 35 U.S.C. § 112, ¶ 2, the Examiner ous structural equivalent of those solvents, par- asserting that the term "highly polar organic ticularly in light of Apotex's arguments that solvent" was indefinite. Additionally, the inde- acetic acid was a known equivalent. However, pendent claim was rejected under 35 U.S.C. the Federal Circuit observed that, before the § 103(a) as obvious over a prior art process of district court, there was a dispute among the making the drug using acetone, which the experts on the issue of the proper method of Examiner assumed was a highly polar organic determining polarity. As such, the Federal solvent. The dependent claims specifying par- Circuit noted that Apotex may be able to pres- ticular solvents were objected to and indicated ent sufficient evidence to rebut the presump- as being allowable if rewritten in independent tion of surrender, and if so, the trier of fact form. In response, Apotex canceled the pend- must determine the proper method of deter- ing claims and replaced them with all new mining polarity and whether acetic acid and claims; the only independent claim presented acetone have the same polarity. ultimately became claim 1 of the '118 patent and was limited to the particular solvents recit- L L P . F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R
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