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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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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