Working until the end of the year, Federal Circuit addresses a Law School Exam Type CaseDecember 26, 2006

The Federal Circuit affirmed a Southern District of Indiana decision that generic drug makers IVAX Pharmaceuticals, Inc, Dr. Reddy’s Labratories, Ltd. (DRL) and Teva Pharmaceuticals USA, Inc. infringed Eli Lilly and Company’s (Lilly) U.S. Patent no. 5,229,382. The ‘382 Patent claims chemical compound olanzapine and the use of the compound to treat schizophrenia. The infringers attempted to show that the ‘382 was invalid as either being anticipated, obvious or that in the alternative, that it was used in the public more than 1 year before Lilly filed an application. Both the trial court and the court of appeals determined that the ‘382 patent was valid and that Lilly had acted appropriately while prosecuting the patent. While the Federal Circuit was addressing each of the above identified areas of concern, they provided the basis for an ideal law school patent prosecution exam question. The Federal Circuit addressed anticipation and the elements necessary for showing anticipation, especially as it applies to chemical compounds. Specifically the Court addressed the issue of how specific a prior art reference has to be to teach a person of ordinary skill in the art to truly anticipate a compound. The Federal Circuit also chose to address obviousness again, further leading to the perfect patent exam question. Once again, the Federal Circuit stressed the importance of Graham v. John Deere Co. The Federal Circuit went on to emphasize that the court will not ignore a relevant property of a compound in the obviousness calculus. When claimed properties differ from the prior art, those differences, if unexpected and significant, may lead to decision of nonobviousness. This general rule is applicable even if there is structural similarity between the applicants’ chemical and that of the prior art. Finally, in an attempt to distinguish the truly average law student from the exceptional law school student, the Federal Circuit chose to address both public use and inequitable conduct. If I was a current or future law student, I personally would be looking for a fact pattern very similar to this case. To read the full text of the decision click here.

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