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CAFC Weekly: May 7, 2010

by Orlando Lopez

This is another week in which only intellectual property opinions are available. Another opinion of interest relates to the FDA rule granting a patent term extension.

In Optium Corp. v. Emcore Corp., another inequitable conduct case, the CAFC discusses the connection between materiality (relevance to determination of accountability) and intent (the intent to deceive the examiner into granting the patent) in inequitable conduct cases. This topic is one of the questions presented by the CAFC in the en banc rehearing of Therasense (See CAFC Weekly: April 30, 2010). The CAFC upheld the District Court decision, that even if the reference withheld was highly material there was not sufficient showing of intent, and Emcore’s patent in question was not unenforceable due to inequitable conduct.

In Rolls-Royce PLC v. United Technologies Corp., a case arising from an interference proceeding, the CAFC considers both claim construction and the determination whether the claims of the Rolls-Royce patent in question were obvious in view of the claims of the United Technologies patent in question. The CAFC states that the issue of whether it would have been obvious to try different approaches in order to arrive at the claimed invention relates to two questions; first, whether the invention is an “identified predictable solution;” and second, whether there is “anticipated success.” The CAFC also considers secondary factors of non-obviousness. Ultimately, the claims of the Rolls-Royce patent were found to be not obvious.

In Robertson v. Timmermans, the issue considered is the procedure for considering whether a claim copied in an interference meets the written description requirement. The CAFC states that whether the copied claim meets the written description requirement, must be determined based on the application from which the claim was copied.

In Wyeth v. Sibelius, which is not considered an intellectual property case by some reporters, the issue considered is the patent term extension due to the testing phase of a drug for an annual. Wyeth had won the previous case regarding the calculation of patent term extensions in the Patent Office. In this case, Wyeth’s challenge of the FDA’s determination of the date when the approval phase began is not successful.

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