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CAFC Weekly: August 6, 2010

by Orlando Lopez

The opinions rendered this week covered the gamut from inequitable conduct to the intersection of patent law and divorce law.

The Ring Plus v. Cingular Wireless opinion relates mostly to inequitable conduct and claim construction. This is another inequitable conduct decision handed down by the District Court before Therasense was granted en banc review by the CAFC.  The CAFC finds that the element of intent necessary for inequitable conduct was not present and reversed the District Court’s ruling of invalidity due to inequitable conduct (the requirement for intent is one of the issues in front of the CAFC in Therasense). It is interesting that the withheld material evidence was an incorrect statement in the background, even though the references cited were presented to the patent office. For those of us that like to keep background sections to a minimum, this opinion is a reminder that the background of a patent application can be used against you. The CAFC also held that the District Court did not err in the claim interpretation.

In Intervet v. Merial Limited, the CAFC considered claim construction and the application of the doctrine of equivalents. The CAFC found that the District Court erred in the interpretation of two terms in the claims and reversed the judgment of no literal infringement. Additionally, the CAFC found that the amendments were tangential to the equivalents present and consequently reversed the judgment of non-infringement under the Doctrine of Equivalents. This is yet another opinion declaring an amendment tangential to the equivalents, and as such, it helps to soften the blow of Festo. The CAFC opinion has received more attention for the, consenting part and dissenting in part, opinion of Judge Dyk , relating to the patentability of isolated DNA. In view of the impending hearing of AMP v. USPTO, where the District Court invalidated Myriad Genetic’s patent on isolated DNA and its uses, Judge Dyk’s comments received much attention.

In King Pharmaceuticals v. Eon Labs, the CAFC considered anticipation of claims and the District Court invalidity ruling applying the Machine or Transformation (MoT) test, now relegated to a clue rather than a test after the Supreme Court ruling in Bilsky. King Pharmaceuticals holds two patents, the ‘128 patent and the ‘102 patent, related to the muscle relaxant Metaxalone. The claims in the ‘128 patent relate to increasing the bioavailability of the muscle relaxant by taking it with food. The claims were found to be inherently anticipated based on the concept that discovering a new benefit of an old process does not make the process patentable for a second time. A number of references described the taking of the muscle relaxant with food, although the references did not describe the fact that the bioavailability was increased. The claims of the ‘102 patent relate to increasing the bioavailability by administering the muscle relaxant with food and informing the patient of an inherent property of the drug. The District Court found that the method claim was not patentable based on the Machine or Transformation test. This is the first case involving lack of patentability decided by the District Court using the MoT test, to be considered by the CAFC after the Supreme Court decision in Bilsky. The CAFC found the claims anticipated or obvious, based on the anticipation of the limitation of providing the muscle relaxant with food and the fact that the limitation of informing the patient adds no novelty to a claim. This argument of not adding novelty is related to the “printed matter” argument, which was first presented more than 20 years ago.

In Adams Respiratory Therapeutics, Inc. v. Perrigo Co., the CAFC considered claim construction (claim interpretation) and issues related to the application of the doctrine of equivalents. While the claim construction arguments are interesting in themselves, in the middle of the claim construction argument there is a discussion of whether in order to prove infringement, the product accused of infringement can be compared to a commercial embodiment of the claim. While infringement is determined by comparing the limitations of a claim to the elements of an accused product, if the commercial-embodiment-product includes all the limitations of the claim, infringement can be determined by comparing the commercial embodiment to the accused product. In regard to the doctrine of equivalents, the CAFC stated that the doctrine of equivalents could be applied to limitations requiring a specific numerical range.

In a case with a different twist, divorce and patent law come together. In Enovsys v. Nextel, Mr. Fomukong is the co-inventor of two patents. One patent was issued before his divorce and the other patent was issued after his divorce. The two patents were then assigned to Enovsys, who then sued Sprint-Nextel (Sprint) for infringement. Sprint then arranged for the co-inventor’s ex-wife to assign the rights to them. Due to the fact that any patent infringement action must be brought by all the co-owners of the patent, Sprint alleged that Enovsys did not have standing because one of the patent owners was not a Plaintiff. However, the divorce was granted in California, where all assets acquired during a marriage are presumed to be community property. During the divorce, the co-inventor and his ex-wife had each asserted that they did not have any community assets or liabilities.  Consequently, the CAFC held that the divorce decree prevented the challenge to Enovsys’ right to sue.

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