Invalidating patent trulign toric accommodating posterior chamber iol
Applying the Federal Circuit case , the district court invalidated the earlier-filed compound patent by asserting the later-filed method of treatment patent as a double patenting reference. The parties also stipulated that if the ’990 patent was found to be a proper double patenting reference, the ’772 would be invalid for obviousness-type double patenting.
The Federal Circuit reversed the decision by holding the analysis in -URAA patents.” While the Court limited the present opinion to the specific facts of this case, the Court applied pre-URAA double-patenting practices to the pre-URAA patent and reasoned that the invalidating reference “did not exist as a double patenting reference” when the pre-URAA patent issued. The timeline of the two patents is of particular importance to the case.
Here, there was a strong case of obviousness based on very close prior art and weak evidence of nonobviousness.
The Board therefore erred in not concluding that claims 1–5 would have been obvious at the time of the claimed invention. Claims 7–9 recite the same oxidation reaction as claim 1 with the added limitation of esterifying the FDCA product.
In an inter partes review (IPR) of a patent for a method of forming 2,5-furan dicarboxylic acid (FDCA) owned by Synvina (previously owned by Furanix Technologies during the IPR proceeding), the Patent Trial and Appeal Board erred by failing to apply the burden-shifting framework applicable to overlapping ranges, the U. Court of Appeals for the Federal Circuit has decided, concluding as a matter of first impression that this framework applies in IPR proceedings as it does in district court cases. du Pont de Nemours and Company and Archer-Daniels-Midland Company (collectively, Du Pont) failed to prove by the preponderance of the evidence that those claims would have been obvious at the time of the claimed invention was reversed (, September 17, 2018, Lourie, A.). Du Pont and Synvina are competitors in the production of FDCA for industrial use. The petition asserted several grounds of obviousness including two relevant on appeal: (1) claims 1–5 over the ’732 publication, alone or in combination with RU ’177 and the ’318 publication; and (2) claims 7–9 over the ’732 publication in view of Applicants Admitted Prior Art, or additionally Lewkowksi and/or Oae, and optionally in view of RU ’177 and the ’318 publication. In this case, the presumption of obviousness applied, and none of the means for rebutting it was demonstrated, the Federal Circuit held. Instead, the Board interpreted two more recent cases, Dynamic Drinkware and Magnum Oil, as prohibiting any burden-shifting framework from applying in an IPR.
The main issue on appeal was whether the reaction conditions claimed in the ’921 patent—specifically, the choice of temperature, pressure, catalyst, and solvent—would have been obvious to a person of ordinary skill at the time of the invention. Rather, Du Pont contended that an appellant must only face a significant risk of infringement liability, and that it faces such a risk for several reasons. As in the declaratory judgment context, a petitioner who appeals from an IPR decision need not face "a specific threat of infringement litigation by the patentee" to establish jurisdiction. Third, a change to a parameter may be patentable if the parameter was not recognized as "result-effective." Fourth, disclosure of very broad ranges may not invite routine optimization. The Board addressed this issue in a single paragraph, and did not cite, let alone discuss, the cases above applying the framework in both district court and USPTO proceedings.
5,665,772 (the ’772 patent) for the compound everolimus—a cancer-treatment drug—and U. Novartis sued the Defendant drug manufacturers in the case when the Defendants sought FDA approval of generic versions of everolimus-based drugs.
6,440,990 (the ’990 patent) directed to methods of treatment using everolimus.
Patent 8,865,921 ("’921 patent"), directed to a method of oxidizing 5-hydroxymethylfurfural ("HMF") or an HMF derivative, such as 5-methylfurfural ("5MF") or 2,5-dimethylfuran ("DMF"), under specified reaction conditions to form 2,5-furan dicarboxylic acid ("FDCA"). Since no action for infringement of the ’921 patent had been brought against Du Pont, Synvina contended that Du Pont can posit only speculative future harm. Thus, "[n]ormally, it is to be expected that a change in temperature, or in concentration, or in both, would be an unpatentable modification." Id. First, a modification of a process parameter may be patentable if it "produce[s] a new and unexpected result which is different in kind and not merely in degree from the results of the prior art." Aller, 220 F.2d at 456. Galderma and other Federal Circuit cases applied this concept in a district court case.Under the applicable legal standards, the Board’s conclusion was error and reversed.The ’732 publication disclosed oxidizing HMF to FDCA with a cobalt, manganese, and bromine catalyst and an acetic acid solvent.Novartis filed the ’772 patent application on April 7, 1995.Two months later, on June 8, 1995, the URAA became effective.
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The Board rejected Du Pont’s contention that a burden-shifting framework applied, reasoning that the Federal Circuit’s decisions in In re Magnum Oil Tools International, Ltd., 829 F.3d 1364, 1375 (Fed. The relevant framework has been articulated as: "[W]here there is a range disclosed in the prior art, and the claimed invention falls within that range, the burden of production falls upon the patentee to come forward with evidence" of teaching away, unexpected results, or other pertinent evidence of nonobviousness. Neither Dynamic Drinkware nor Magnum Oil involved overlapping ranges.