July 09, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the last four patent cases that were appealed from the district court level and decided by the Federal Circuit during the 26th calendar week of 2007. All opinions are precedential unless otherwise indicated.

In re Star Scientific, Inc. (Order) (06/27/2007, non-precedential): petition for a writ of mandamus to direct the district court to issue a decision regarding patent unenforceability; district court entered orders granting summary judgment for invalidity due to indefiniteness; request to certify the invalidity determination for immediate appeal (because there was no final judgment) was denied; petition for writ of mandamus denied because Star Scientific has not shown “a clear abuse of discretion or that the district court has "obstinately refuse[d]" to adjudicate the matter” and because the district court recently stated a date certain upon which it expects to resolve the matter

Hyatt v. Dudas (06/28/2007): appeal of district court’s decision that compliance with MPEP § 2163.06(I)(B) is insufficient to establish a prima facie case and shift the burden to the applicant (reversed); discussion of several continuation applications, dating back to the 1970’s, all based on the same specification; during prosecution, the applicant withdrew all claims, submitted over 1,100 new claims, and the examiner rejected the claims under 35 U.S.C. § 112 because although each element of the claims had support in the specification, the configurations or combinations claimed had no support; examiner based the rejection on the procedure outlined in MPEP § 2163.06(I)(B); the applicant responded only to the adequacy of the examiner’s prima facie case and not the substance of the rejection; the MPEP “does not have the force of law,” but it “is made available to the public and . . . describe[s] procedures on which the public can rely”; “[a] statement of a prima facie case need not be a full exposition on every conceivable deficiency of a claim”; adequate written description means that, in the specification, the applicant must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention”; an examiner, by complying with MPEP § 2163.04(I)(B), sets forth a sufficient prima facie basis for a rejection due to lack of written description

Takeda Chemical Industries, LTD., et al. v. Alphapharm PTY., LTD., et al. (06/28/2007): appeal of decision that patent-in-suit was not invalid for obviousness (affirmed); discussion of patent related to antidiabetic compounds (U.S. Patent No. 4,687,777, entitled “Thiazolidinedione derivatives, useful as antidiabetic agents”); confirmation that the Graham factors “still control an obviousness inquiry” in view of KSR; “structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness”; detailed application of KSR; conclusion that the district court did not err in holding that Alphapharm failed to establish a prima facie case of obviousness; “one who claims a compound, per se, which is structurally similar to a prior art compound must rebut the presumed expectation that the structurally similar compounds have similar properties”; decision affirmed because the district court did not err in determining that the claimed compounds would not have been obvious in light of the prior art, and hence that the patent has not been shown to be invalid

Frazier, et al. v. Layne Christensen Company, et al. (06/29/2007, non-precedential): appeal of judgment as a matter of law that the asserted claims of the patent-in-suit are invalid for obviousness, and appeal by patentee of sanctions for discovery misconduct (both affirmed); discussion of patent related to stimulating, refurbishing, or otherwise increasing production from water wells (U.S. Patent No. 5,579,845, entitled “Method for improved water well production”); “[o]rdinarily, the steps of a method claim need not be performed in the order in which they are recited”; several patent-related and procedural reasons cited to support the court’s rejection the plaintiffs’ argument that the district court failed to refer to specific prior art references in support of the JMOL of obviousness


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Mark Reichel
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I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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