Section 121 safe harbor applies only to divisional, not continuation-in-part; later patent invalid

In a decision last week, the Federal Circuit construed the scope of § 121's allowances for subsequent patent applications directed toward nonelected inventions in response to a restriction requirement.  There were three patents at issue, one directed to pharmaceutical compounds, one to compositions containing those compounds, and a third covering methods of suing the compounds.  The method of use patent was derived from a continuation-in-part application filed after a restriction requirement in the original application.  The district court held that notwithstanding how the application was styled, it was entitled to the original application's priority date.

The Federal Circuit disagreed, holding that § 121, by its terms, is limited to divisional applications.  As a result, the method of use patent was not entitled to the earlier filing date, and was invalid for obviousness-type double patenting based on the composition patent.  The court affirmed the district court's findings that the best mode requirement was not violated and that no inequitable conduct had occurred.

More detail of Pfizer, Inc. v. Teva Pharms. USA, Inc. after the jump.

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"Ordinary creativity" of one of ordinary skill in the art used to show claims not indefinite

In a decision today the Federal Circuit held that the district court had incorrectly determined that AllVoice Computing PLC's patent was invalid for indefiniteness and failure to meet the best mode requirement. In reaching its decision, the Federal Circuit determined that the lower court had used the prosecution history of the patent to interpret the claims too narrowly and that the alleged best mode violation was outside of the scope of the claim.

This Federal Circuit also cited to KSR as a reason for holding a patent to be valid. Specifically, the court cited the passage describing one of ordinary skill in the art as "a person of ordinary creativity, not an automaton" in support of its holding that the claims were not indefinite. Because of this "ordinary creativity," one of ordinary skill in the art would understand the scope of the means-plus-function limitations in the claims, and as a result, they were not indefinite.

More detail of AllVoice Computing PLC v. Nuance Commc'ns, Inc. after the jump.

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