Law.com Subscribers SAVE 30%
Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.
Product-By-Process Claim Construction: Conflict in Federal Circuit Precedent Remains Unresolved
Construing claims that use the process by which a product is created to define the invention ' that is, product-by-process claims ' was not made any easier by the Federal Circuit's recent decision in SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312 (Fed. Cir. 2006). The Federal Circuit again declined to resolve the long-standing conflict between two decisions ' the 1991 decision in Scripps Clinic & Res. Foun. v. Genentech Corp., 927 F.2d 1565 (Fed. Cir. 1991), which held that product-by-process claims should not be limited by the process steps in the claims, (i.e., such claims cover an identical end-product regardless of the steps used) and the 1992 decision in Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d 834 (Fed. Cir. 1992), which held that product-by-process claims should be construed to only cover the end-product if produced by the specifically claimed process steps. As explained below, this state of affairs warrants that patent applicants and litigants stay tuned to the case law and adjust their respective claim drafting and analysis strategies accordingly.
The SmithKline Case
In SmithKline, SmithKline Beecham Corporation's ('SmithKline') drug for treating depression, sold under the trade name Paxil', was subject to generic attack when Apotex Corporation ('Apotex') filed an Abbreviated New Drug Application with the FDA to market a generic version of the drug. SmithKline sued Apotex, asserting its patent claiming the active ingredient and defining the composition in terms of the steps required to make it in tablet form (instead of reciting the drug's structural characteristics). The district court granted Apotex's motion for summary judgment, holding that the patent was invalid because it was anticipated by SmithKline's earlier patent covering the active ingredient, paroxetine. In reaching its decision, the district court relied on the Federal Circuit's Scripps decision, finding that Scripps required evaluating the claims by reference to the products claimed, without considering the process steps as claim limitations. Because SmithKline's earlier patent disclosed tablets containing paroxetine, including the dosages specified in SmithKline's product-by-process patent claims, the district court found anticipation.
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
Removing Restrictive Covenants In New York
In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?