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Archive for August, 2011


"The world is a dangerous place. Not because of the people who are evil; but because of the people who don't do anything about it."
Albert Einstein

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CAFC Weekly: Week of July 22, 2011

by Orlando Lopez

There were no precedential patent-related opinions during the preceding week; however, two precedential patent-related opinions were handed down this week.  One opinion related to prosecution history estoppel (the affect of arguments during prosecution of the patent application) and the doctrine of equivalents, and the other related to the rules governing the argument of dependent claims in an appeal before the USPTO Board of Patent Appeals And Interferences (BPAI).

In Duramed Pharmaceuticals Inc. v. Paddock Laboratories Inc., Duramed owns a patent for a formulation for estrogen that includes a moisture barrier coating, where the formulation is used in hormone replacement therapy.  During prosecution of the application, responding to a rejection, Duramed amended claim 1 to recite a specific moisture barrier coating and the application was allowed.  Subsequently, Duramed filed suit against Paddock, alleging infringement of the patent for the estrogen formulation.  The suit was based on Paddock’s Abbreviated New Drug Application (ANDA) for a generic version of a hormone replacement therapy product utilizing a moisture barrier coating which was different from the specific one recited in Duramed’s claim 1.  The District Court granted Paddock’s motion for summary judgment of non-infringement, holding that Duramed’s amendment to claim 1 estopped Duramed from claiming infringement based on the doctrine of equivalents.  Duramed appealed to the CAFC, which upheld the judgment of the District Court.  Duramed’s argument on appeal was based on the fact that the equivalent moisture barrier coating used by Paddock was not foreseeable at the time the amendment was entered.  The issue was whether, in order to be foreseeable, the barrier coating used by Paddock had to be known, at the time when Duramed made the amendment, as a barrier coating for use with estrogens rather than as a barrier coating for use in the field of pharmaceutical compositions.  The CAFC held that foreseeability does not require that degree of precision in the knowledge of how to apply the known characteristic. The decision continues to clarify the effects of the Supreme Court decision in Festo. Read the rest of this entry »

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"Learn from yesterday, live for today, hope for tomorrow. The important thing is not to stop questioning."
Albert Einstein

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