M A Y 2 0 0 5 Last The Federal Circuit month at Month at a Glance COURT FINDS PAROXETINE PATENT INVALID BASED ON NEW PRIOR ART After en banc Court vacates prior ruling of invalidity based on public use, panel issues new decision of invalidity based on prior art patent. SmithKline Beecham Corp. v. Apotex Corp. , No. 03-1285 (Fed. Cir. Apr. 8, 2005) . . . . . . . . . . . . . . .1 DISMISSAL OF DISTRICT COURT ACTION WITH PREJUDICE WAS ABUSE OF DISCRETION Plaintiff’s failure to show cause as to why it failed to serve complaint in a timely manner did not warrant extreme result of dismissal with prejudice. Bowling v. Hasbro, Inc. , No. 04-1364 (Fed. Cir. Apr. 11, 2005) . . . . . . . . . . . . .2 LACK OF DETAIL IN CLAIM-CONSTRUCTION ANALYSIS AND INFRINGEMENT FINDINGS RESULTS IN REMAND Although Federal Circuit’s review of claim construction is de novo, the Court must be furnished with sufficient findings and reasoning to permit Washington, DC meaningful appellate scrutiny. Nazomi Communications, Inc. v. ARM 202.408.4000 Holdings, PLC , No. 04-1101 (Fed. Cir. Apr. 11, 2005) . . . . . . . . . . . . . . . . . . . .2 Atlanta, GA 404.653.6400 CLAIM CONSTRUCTION AFFIRMED, BUT REMAND ON INFRINGEMENT Claim scope is tied closely to the specification where the preferred embodiment Cambridge, MA is described as the invention itself. Rhodia Chimie v. PPG Indus. Inc. , 617.452.1600 No. 04-1246 (Fed. Cir. Apr. 11, 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3 Palo Alto, CA SATELLITE PATENT NOT INVALID 650.849.6600 Expert testimony supports written description of method for maneuvering Reston, VA satellites in space. Space Sys./Loral, Inc. v. Lockheed Martin Corp. , No. 04-1501 571.203.2700 (Fed. Cir. Apr. 20, 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5 Brussels WHEREBY CLAUSE IS AN EFFECTIVE LIMITATION + 32 2 646 0353 When a whereby clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention. Taipei + 886 2 2712 7001 Hoffer v. Microsoft Corp. , No. 04-1103 (Fed. Cir. Apr. 22, 2005) . . . . . . . . . . . .5 Tokyo SPECIFICATION IS KEY TO CLAIM CONSTRUCTION + 03 3431 6943 District court’s claim construction improperly excluded disclosed embodiments. Nellcor Puritan Bennett, Inc. v. Masimo Corp. , No. 04-1247 (Fed. Cir. Apr. 8, 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .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 Court Finds Paroxetine Patent Following the en banc decision that vacat- ed the public-use determination, the Invalid Based on New Prior Art Federal Circuit reversed the district court and held that claim 1 of the ‘723 patent Jennifer S. Swan was inherently anticipated by U.S. Patent No. 4,007,196 (“the ‘196 patent”). [Judges: Rader (author), Bryson, and Apotex had not appealed this decision to Gajarsa] the Federal Circuit. Specifically, in its prior public-use opinion, the panel had noted In SmithKline Beecham Corp. v. Apotex that “the district court . . . determined Corp. , No. 03-1285 (Fed. Cir. Apr. 8, that Apotex did not present clear and 2005), the Federal Circuit, sitting en banc, convincing evidence of inherent anticipa- vacated the prior panel’s decision, tion . . . . Apotex does not appeal that SmithKline Beecham Corp. v. Apotex Corp. , Ruling.” SB v. Apotex , 365 F.3d at 1315. 365 F.3d 1306 (Fed. Cir. 2004), that claim Nevertheless, in a split decision, the 1 of U.S. Patent No. 4,721,723 (“the ‘723 majority panel sua sponte reversed the dis- patent”) was invalid under the “public trict court and held the claim invalid for use” bar of 35 U.S.C. § 102(b). The Court inherent anticipation over the ‘196 patent. page 01 then remanded the case back to the panel The ‘196 patent does not disclose paroxe- for further proceedings. tine hydrochloride, but discloses a maleate In a new decision, SmithKline Beecham salt form of paroxetine. Although there Corp. v. Apotex Corp. , 403 F.3d 1331 (Fed. was no evidence in the record that before Cir. 2005), issued the same day, the panel the preparation of hemihydrate by the again held that Apotex Corporation named inventors, anyone had ever prac- (“Apotex”) infringed claim 1, which ticed the ‘196 patent and obtained hemi- recites a “crystalline paroxetine hydrochlo- hydrate, and no evidence that anyone had ride hemihydrate.” The panel found that ever recognized the existence of hemihy- claim 1 covers any amount of paroxetine drate in the prior art, the majority held hydrochloride hemihydrate without limita- that the ‘196 patent necessarily produced tion and that the scope of this claim undetectable amounts of paroxetine would be clear to those of skill in the art. hydrochloride hemihydrate. Thus, the The panel rejected the district court’s majority invalidated claim 1 under indefiniteness findings, stating that “the 35 U.S.C. § 102(b). test for indefiniteness does not depend on Judge Gajarsa filed a separate opinion a potential infringer’s ability to ascertain concurring in the judgment. Judge the nature of its own accused product to Gajarsa would have held the ‘723 patent determine infringement, but instead on infringed by Apotex, but claim 1 invalid whether the claim delineates to a skilled under 35 U.S.C. § 101. artisan the bounds of the invention.” The Judge Newman dissented from the panel adopted the district court’s factual panel’s inherency holding, stating that it finding that Apotex’s paroxetine “contravenes long-established precedent.” hydrochloride anhydrate would contain SmithKline Beecham Corp. v. Apotex , paroxetine hydrochloride hemihydrate 403 F.3d 1328, 1330 (Fed. Cir. 2005). and, thus, found that under the correct Judge Newman stated that there was no claim construction, Apotex would infringe evidence that PHC hemihydrate existed at claim 1. the time the ‘196 patent was filed. She The Court, however, also held claim 1 stated that the district court’s finding that of the ‘723 patent invalid, but this time the PHC hemihydrates had not been pro- on a different ground than public use. 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
Recommend
More recommend
