In In re Montgomery, the Federal Circuit addressed the issue of anticipation by inherency in the therapeutic context. This case illustrates the difficult doctrine of inherency and the potential importance of claim language—and claim construction—to an inherency analysis.Continue reading this entry
In ClearValue, Inc. v. Pearl River Polymers, Inc., the Federal Circuit found that a jury verdict of validity was not supported by substantial evidence, and so reversed the district court’s decision denying Pearl River’s motion for judgment as a matter of law (JMOL). This case is interesting because it explains when a broad range may or may not anticipate a narrower range. Continue reading this entry
In Teva Pharmaceutical Industries, Ltd. v. AstraZeneca Pharmaceuticals LP, the Federal Circuit took what could be one of its last looks at the requirements for establishing prior invention under 35 USC § 102(g)(2). The court determined that although conception requires some appreciation of the claimed subject matter, it does not require an understanding of all of the properties that may be claimed. Continue reading this entry
The changes to 35 USC § 102 embodied in the America Invents Act (AIA) take effect on March 16, 2013, under complicated effective date provisions. The general consensus seems to be that applicants should try to file new applications before the law changes, because (for example) applications filed under the new law will be subject to a broader definition of prior art and will lose the ability to swear behind certain prior art by proving an earlier date of invention. Moreover, patents granted from such applications will be subject to challenge under the new post-grant review provisions.
In counseling clients on how to prepare for the impact of patent reform, I’ve been trying to identify situations where an application might be better off under the new law. So far, only one scenario comes to mind–an application threatened by an inventor-based disclosure that was made before a foreign priority date.
In Creative Compounds, LLC v. Starmark Laboratories, the Federal Circuit clarified that the “clear and convincing” burden of proof applies to an allegation of prior invention unless an action is brought under 35 USC § 291 or the parties identify and agree on common claimed subject matter and seek an adjudication of priority. While Patent Reform may do away with the specific provisions at issue in this case, at least some of the principles may carry over to the proposed “derivation” proceedings.
The Supreme Court’s Bilksi decision recognized three exceptions to 35 USC § 101: “laws of nature, physical phenomena, and abstract ideas.” The Federal Circuit’s decision in King Pharmaceuticals, Inc. v. Eon Labs., Inc. warns us that although satisfying the machine-or-transformation test might prove to be an effective antidote against § 101 defects, a patent claim still may be poisoned by 35 USC § 102 if the method at issue inherently flows from a prior art method—such as if it recites a newly discovered law of nature or physical phenomenon that naturally results from the prior art method.