Federal Circuit affirms finding of no anticipation or obviousness, no mention of KSR to be found

The Federal Circuit yesterday affirmed a decision by the District Court for the District of Delaware upholding the validity of Reissue Patent 34,712 ("the '712 patent") and the injunction preventing infringement of the '712 patent.  Specifically, the court affirmed the district court's decision that the prior art reference relied upon for the defendants' anticipation argument was not enabling, and thus could not anticipate the claims.  Also, the finding of no obviousness was affirmed, because the district court correctly assessed the Graham factors, and in light of those factual findings, the legal conclusion of obviousness was correct.

The court also affirmed the finding that there had not been an impermissible broadening reissue filed more than two years after the patent was granted.  Finally, the court limited the injunction to only the specific products that were the subject of the Abbreviated New Drug Application (ANDA) that led to the lawsuit, but affirmed the inclusion of both defendants as parties to the injunction, even though one would only be liable for inducing infringement.

More detail of Forest Labs., Inc. v. Ivax Pharms., Inc. after the jump.

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Decision to accept later filing date due to omitted items not correctable via reissue

When you make a conscious choice between alternatives during prosecution, the Federal Circuit says you're stuck with it. That's the message from In re Serenkin, where the court held that an inventor could not, through reissue, claim priority to his provisional filing. Serenkin had filed a PCT application just before the one-year anniversary of his provisional, but the PCT did not contain the drawings. He had to choose between the drawings and his filing date: he chose the drawings. As a result of this "deliberate choice," he could not later go back and reclaim his provisional filing date via reissue, because there was no "error" to correct as required by the reissue statute, 35 U.S.C. § 251.

More details of the case after the jump.

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Federal Circuit issues two decisions regarding reissue patents

Over the course of three court days, the Federal Circuit issued two decisions in cases involving reissue patents. After a patent is issued, if the patent holder discovers that the patent is "wholly or partly inoperative or invalid," the patentee may surrender the original patent and seek reissue of the patent. If this is sought within the first two years after the original patent issued, the claims may be broadened to the extent supported by the specification and not limited by the prior art. Often reissue applications are filed for this purpose; the patent holder realizes that they could have received broader claims based on the cited prior art, so they seek to broaden the patent after it is issued. Reissue applications are not without risk, however, as all the claims of the patent are "in play," meaning that the USPTO may reject claims it had previously allowed on new grounds. So, reissue can result in the loss of the patent if the patent office rejects the original claims for some reason other than those raised during prosecution of the original patent.

There is a limitation on the ability of the ability to broaden claims of a patent during reissue: the rule against recapture. This rule states that if the patent holder gave up claim coverage during prosecution of the original patent, he or she may not recapture that surrendered subject matter via reissue. This concept is similar to the doctrine of prosecution history estoppel, which prevents a patent holder from arguing infringement by equivalents when the claim element at issue was narrowed during prosecution.

More information about the new cases after the jump.

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