obvIPat - Obviously Patentable

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CAFC Weekly: July 30, 2010

by Orlando Lopez

There were only two precedential opinions handed down during the week ending July 30th.  These opinions related to claim construction and to obviousness double patenting.

In Becton Dickinson v. Tyco Healthcare, a case related to a safety needle, the claim construction was reviewed by the CAFC.  The phrase under question, “spring means connected to said hinged arm,” had been interpreted by the District Court as not requiring a component performing the spring function that was a distinct structural element from the hinged arm.  The CAFC disagreed with the claim interpretation and Justice Gajarza dissented.  The CAFC held that the spring means were separate from the hinged arm and that the claim requires two structures.  The holding in this case should not be taken to mean that two structures are always necessary for separate components in one element of the claim (usually referred to as a limitation); however, if the same structure element is going to perform two claimed functions, then there should be some discussion of this in the specification. Additionally, the interpretation of the same structure performing the two functions, should not lead to an interpretation of the claim that renders the claim invalid.  In one interesting aside, this case pitted two of Boston’s finest against one another.  No, not two Boston policeman, but rather two of Boston’s most well-known patent litigators, Bill Lee and Frank Porcelli.

Obviousness double patenting, which results when the claims of one patent or patent application are deemed to be obvious variations of the claims of another patent, and both patents are owned by the same entity, was the subject of the other precedential opinion, Sun Pharmaceutical v. Eli Lilly. Lilly owns two patents, the ‘826 patent and the ‘614 patent ,both of which are related to the drug GEMZAR.  The ‘614 patent has claims that cover a class of nucleosides related to GEMZAR, and claims that cover the application of the compounds to the treatment of viral infections.  The ‘826 patent has claims that cover the application of the compounds to the treatment of cancer.  Both of the patents were filed on the same day.  In a declaratory judgment action, the District Court ruled that  some claims of the ‘826 patent where invalid due to obviousness double patenting when compared to the ‘614 patent.  Lilly appealed to the CAFC, which upheld the decision of the District Court.  This opinion is of interest since obviousness double patenting is usually encountered during prosecution of the application, where it is easily cured by a terminal disclaimer.  In this case, the CAFC presented the public policy argument, that after claiming the composition of the compounds in the ‘614 patent, it would be counter to the sense of justice to allow Lilly to obtain patent coverage for each of the uses of the compounds.  However, since both patent applications were filed on the same day, other than for patent term extensions, both patents expire at the same term, 20 years from filing.

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