July 18, 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 three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 28th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Pharmasterm Therapeutics, Inc. v. Viacell, Inc., et al. (07/09/2007): appeal of judgment as a matter of law (“JMOL”) orders on infringement and cross-appeal from the court’s refusal to grant JMOL on invalidity (judgment as to infringement issues affirmed, and with respect to the counterclaim of invalidity for obviousness, judgment reversed and the entry of judgment for the defendants directed); discussion of two patents related to stem cell isolation and preservation (U.S. Patent No. 5,004,681, entitled “Preservation of fetal and neonatal hematopoietic stem and progenitor cells of the blood”, and U.S. Patent No. 5,192,553, entitled “Isolation and preservation of fetal and neonatal hematopoietic stem and progenitor cells of the blood and methods of therapeutic use”); “[a] statement in the patent that something is in the prior art is binding on the applicant and patentee for determinations of anticipation and obviousness”; “[g]ranting patent protection to advances that would occur in the ordinary course without real innovation retards progress”; “simply because the formation and properties of a new compound must be verified through testing does not mean that the compound satisfies the test for patentability ‘since the expectation of success need only be reasonable, not absolute’”; “an invention would not be deemed obvious if all that was suggested “was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it”; “[w]hen the party asserting invalidity relies on references that were considered during examination or reexamination, that party “bears the added burden of overcoming the deference that is due to a qualified government agency presumed to have done its job”; the judgment of the district court with respect to the appeal affirmed but the judgment on the cross-appeal with respect to the issue of obviousness reversed and remanded to the district court for entry of judgment in the defendants’ favor

Kramer v. Dudas (07/11/2007, non-precedential): appeal of final judgment by district court dismissing his complaint for failure to timely file (affirmed); plaintiff was entitled to appeal the USPTO’s final decision under 35 U.S.C. § 32, his complaint was properly construed as seeking relief under that section; discussion of regrade of patent bar examination; because complaint not filed within 30 days of the challenged USPTO action, the plaintiff’s petition was deemed untimely; equitable tolling was deemed unwarranted because plaintiff was not mislead or misinformed about deadlines for seeking judicial review

Daiichi Sankyo Co. v. Apotex (07/11/2007, non-precedential): appeal of judgment of infringement and that the patent-in-suit is not invalid or unenforceable (reversed); discussion of patent related to a method for treating bacterial ear infections (U.S. Patent No. 5,401,741, entitled “Topical preparation for treating otopathy”); the underlying factual inquiries in an obviousness analysis include: “(1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness”; “[f]actors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field”; district court’s determination of the level of ordinary skill in the art was in error based on the facts of the case; determination that a reasonably jury, when presented with the specific prior art reference pertinent to the case, would have no other choice than to conclude that the teachings of the patent-in-suit would have been obvious; because the patent-in-suit would have been obvious in view of the prior art, the district court’s decision was reversed


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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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