Patent Law Weblog
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Category: Claim Construction
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By Kevin E. Noonan — A classic example of product "evergreening" is how AstraZeneca used its experience with its omeprazole franchise (sold for over a decade as Prilosec®) to promote an alternative form of the drug, Nexium® (particularly, the S-omeprazole enantiomer) as "the little purple pill." One reason this strategy deserves admiration is that it…
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By Donald Zuhn — In an appeal decided last month, the Federal Circuit reversed and remanded a decision of noninfringement by the District Court for the District of New Jersey with respect to U.S. Patent No. 7,524,834, and affirmed the District Court's finding of obviousness with respect to U.S. Patent No. 6,598,603. The panel also…
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By Andrew Williams — Saying "But I won't do it" is not sufficient to avoid infringement in a Hatch-Waxman litigation, according to the Federal Circuit in the recently decided Sunovion Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA, Inc. The ANDA applicant in that case was applying to market a generic version of Lunesta®, a chiral drug…
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By Kevin E. Noonan — From the opening sentence of the Federal Circuit's opinion, it is clear that the Court believed that Bayer had claimed more broadly than it was entitled to and claimed species it had not described, thus failing to satisfy the written description requirement. Regents of Univ. of Cal. v. Eli Lilly…
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By Donald Zuhn — On August 23, in SkinMedica, Inc. v. Histogen Inc., the Federal Circuit determined that the District Court for the Southern District of California did not err in construing the phrase "culturing . . . cells in three-dimensions" in the claims of U.S. Patent Nos. 6,372,494 and 7,118,746, and therefore affirmed the…
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By Andrew Williams — A claim term that can have different meanings or values depending on the method used to measure it renders the claim indefinite because it is impossible for a potential infringer to discern the boundaries of the claim. This is because it is not possible to determine whether potential infringing activity will…
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By Kevin E. Noonan — In his novel My Summer in a Garden (1870), Charles Dudley Warner famously said "Politics makes strange bedfellows." That aphorism is illustrated once again in the joining of the Public Patent Foundation with eight technology transfer organizations and the Association of University of Technology Managers,* urging the Federal Circuit to…
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By Andrew Williams — Can the claim term "substantially pure" mean two different things when the specification uses the same term to refer to both an intermediate compound and a final drug product in a specification? The Federal Circuit recently answered the question in the affirmative, in Aventis Pharma. Inc. v. Amino Chemicals Ltd., depending…
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By Donald Zuhn — Yesterday, in Biogen Idec, Inc. v. GlaxoSmithKline LLC, the Federal Circuit affirmed the determination by the District Court for the Southern District of California that the claim term "anti-CD20 antibody" as used in U.S. Patent No. 7,682,612 was limited by prosecution history estoppel. The '612 patent is directed to the treatment…
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By Michael Greenfield — Those of you who dabble with chemical structures while prosecuting or litigating pharmaceutical patents may find Allergan v. Barr Laboratories, Inc., interesting. In this ANDA litigation brought by Allergan against Barr, Teva, and Sandoz ("Barr"), the Federal Circuit opined on issues of claim construction and obviousness with respect to Allergan's Lumigan®,…
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