Sughrue Review January 2010

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The=20 Sughrue Review

Koninklijke=20 Philips Electronics N.V. v. Cardiac Science Operating=20 CompanyYour = Spec Or Mine?

Federal Circuit, = 2009-1241,=20 January 5, 2010

Author: Michael G. = Raucci=20

In Philips, the Federal Circuit = held that=20 the Board of Appeals erred by applying 37 C.F.R. = =C2=A7 41.200(b)=20 and disregarding the original disclosure when a = patentee=20 challenges an applicant=E2=80=99s written description = support in an=20 interference proceeding. According to the court, when = an=20 applicant copies claims from an issued patent in order = to=20 provoke an interference, the meaning of an ambiguous = claim=20 term will be defined by the specification of the = patent from=20 which the claims were copied, not the = applicant=E2=80=99s=20 specification. On the other hand, for purposes of = invalidity=20 under 35 U.S.C. =C2=A7 102 and =C2=A7 103 during an = interference, the=20 applicant=E2=80=99s claims will be interpreted in = light of the=20 applicant=E2=80=99s specification. Thus, the answer to = the question=20 =E2=80=9CYour spec or mine?=E2=80=9D depends on = whether a party in an=20 interference proceeding is challenging written = description=20 under =C2=A7 112, 1 or validity under =C2=A7 102 or = =C2=A7 103.

In=20 the present case, Philips is the assignee of USPN = 6,241,751=20 (the =E2=80=9C=E2=80=98751 patent=E2=80=9D), which is = directed to a cardiac=20 defibrillator that delivers electrical shocks to a = patient=E2=80=99s=20 heart during ventricular fibrillation. In order to = provoke an=20 interference, within one year of the issue date of the = =E2=80=98751=20 patent, Cardiac Science filed continuation Application = No.=20 10/159,806 (the =E2=80=9COwen application=E2=80=9D) in = which it copied claims=20 1-37 of the =E2=80=98751 patent.

The USPTO = declared an=20 interference between the Owen application and the = =E2=80=98751 patent,=20 and formulated one count for the interference, which = defines=20 the interfering subject matter that sets the scope for = proving=20 priority. Here, the count was defined by the Board as = claim 15=20 of the =E2=80=98751 patent or claim 15 of the Owen = application.=20

In an interference proceeding, the Board has = the=20 authority under 35 U.S.C. =C2=A7 135(a) to decide = issues relating=20 to priority and patentability, and pursuant to =C2=A7 = 135(a), the=20 USPTO has issued procedural regulations that govern=20 interference proceedings. In this respect, a party to = an=20 interference can file a preliminary motion attacking = the=20 validity of an opponents claims.

Here, Philips = filed a=20 preliminary motion to challenge whether the Owen = application=20 had adequate written description support under =C2=A7 = 112, 1, for=20 the subject matter of the count. In particular, = Philips=20 asserted that the =E2=80=98751 patent narrowly defined = the term=20 =E2=80=9Cimpedance-compensated defibrillation = pulse=E2=80=9D as requiring =E2=80=9Can=20 overall capacitance and charge voltage tailored to the = patient=20 impedance and the desired energy level.=E2=80=9D In = contrast, Philips=20 asserted that the Owen application failed to disclose = desired=20 energy level. In other words, the Owen application = allegedly=20 failed to provide support for = =E2=80=9Cimpedance-compensated=20 defibrillation pulse=E2=80=9D as the term is defined = by the =E2=80=98751=20 application.

The Board, however, rejected = Philips=20 argument, and instead relied on a USPTO regulation = that=20 governs claim construction in an interference = proceeding: =E2=80=9CA=20 claim shall be given its broadest reasonable = construction in=20 light of the specification of the application or = patent in=20 which it appears.=E2=80=9D 37 C.F.R. =C2=A7 41.200(b). = Following this=20 regulation, the Board held that the Owen application = had=20 support for =E2=80=9Cimpedance-compensated = defibrillation pulse,=E2=80=9D as=20 the term is defined by the Owen application, and thus = denied=20 Philips =C2=A7 112, 1 invalidity motion.

The = Federal=20 Circuit disagreed.

Following Agilent = Techs., Inc.=20 v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. = 2009), the=20 Federal Circuit held that the Board of Appeals erred = by=20 applying 37 C.F.R. =C2=A7 41.200(b) and disregarding = the original=20 disclosure when a patentee challenges an = applicant=E2=80=99s written=20 description in an interference proceeding.

In=20 Agilent, the Federal Circuit addressed the=20 differences between a written description challenge = and a=20 validity challenge in interference proceedings, = respectively=20 upholding the rules from In re Spina, 975 = F.2d 854=20 (Fed. Cir. 1992) and Rowe v. Dror, 112, F.3d = 473=20 (Fed. Cir. 1997). Specifically, the court held: = =E2=80=9C[W]hen a=20 party challenges written description support for an=20 interference count or the copied claim in an = interference, the=20 originating disclosure provides the meaning of the = pertinent=20 claim language.=E2=80=9D Agilent, 567 F.3d at = 1375. In=20 contrast, =E2=80=9C[w]hen a party challenges a = claim=E2=80=99s validity under=20 35 U.S.C. =C2=A7 102 or =C2=A7 103, however, this = court and the Board=20 must interpret the claim in light of the specification = in=20 which it appears.=E2=80=9D Id.

Thus, = the relevant=20 specification for claim interpretation depends on = whether a=20 party in an interference proceeding challenges the = written=20 description under =C2=A7 112, 1 or challenges validity = under =C2=A7 102=20 or =C2=A7 103.

In sum, for purposes of written = description=20 under =C2=A7 112, 1 in an interference proceeding, the = question=20 becomes whether the copying party=E2=80=99s = specification adequately=20 supported the subject matter claimed by the other = party.=20 Applying this to Philips, Owen=E2=80=99s = specification must=20 adequately support the subject matter claimed by the = inventors=20 of the =E2=80=98751 patent. Accordingly, the Federal = Circuit ordered=20 that the district court on remand must construe the = term=20 =E2=80=9Cimpedance-compensated defibrillation = pulse=E2=80=9D in light of the=20 =E2=80=98751 patent written description and then = determine whether the=20 Owen application=E2=80=99s written description = satisfies =C2=A7 112, 1.=20

At this point the reader may question: What = about 37=20 C.F.R. =C2=A7 41.200(b), which requires that a claim = be given its=20 broadest reasonable construction in light of the specification of = the=20 application or patent in which it appears, = regardless=20 of the type of challenge? This regulation appears to = answer to=20 the question =E2=80=9CYour spec or mine?=E2=80=9D for = any type of challenge.=20

On the contrary, the Federal Circuit declared = that=20 this regulation goes beyond the USPTO=E2=80=99s = rulemaking authority.=20 Thus, the Board is required to follow the rule of = In re=20 Spina and Agilent, instead of 37 C.F.R. = =C2=A7=20 41.200(b), when a party challenges another=E2=80=99s = written=20 description during an interference proceeding because = the=20 USPTO lacks the substantive rulemaking authority to=20 administratively set aside judicial=20 precedent.

Restaurant=20 Technologies, Inc. v. Jersey Shore Chicken and = Klee=E2=80=99s Bar=20 & GrillPatent=20 Rights With Limited Means

Federal Circuit, = 2009-1176,=20 January 6, 2010

Author: David Emery =

Delivering exactly what 35 U.S.C. =C2=A7 112, = sixth=20 paragraph, ordered, the Federal Circuit served Jersey = Shore=20 Chicken a happy meal. Restaurant Technologies=E2=80=99 = attempt to=20 assert their patent was poisoned by the = Court=E2=80=99s interpretation=20 of =E2=80=9Cmeans-plus-function=E2=80=9D claim terms = littered throughout the=20 asserted claims of the patent. This decision serves as = a=20 reminder to patentees that the scope of = means-plus-function=20 terms will be limited under U.S. patent law. As a = remedy,=20 every patent application should include, or be amended = to=20 include, claims without means plus function = terminology.=20

Serving the order, the Federal Circuit = affirmed the=20 District Court=E2=80=99s grant of summary judgment of = non-infringement=20 of claims 1 and 8 of U.S. Patent 5,249,511 as asserted = by=20 Restaurant Technologies. The claims related to an = apparatus=20 for distributing and recycling cooking oil. This = decision=20 hinged on the interpretation of two = =E2=80=9Cmeans-plus-function=E2=80=9D=20 terms in claim 1. Claim 1 recites a =E2=80=9Cmeans for = metering oil=E2=80=99=20 and =E2=80=9Ccontrol means for selectively operating = said filtering,=20 waste supply, and fryer valve means and for selecting = a pipe=20 between a predetermined pair of said=20 stations.

Construing the claim terms using a = two step=20 process, the Court identified the function based on = the claim=20 language and then ascertained the corresponding = structures=20 disclosed within the specification for performing = those=20 functions. See Omega = Eng=E2=80=99g, Inc. v. Raytek=20 Corp., 334 F.3d 1314, 1322 (Fed. Cir. 2003) = and=20 Cardiac=20 Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d = 1106, 1113=20 (Fed. Cir. 2002). After this construction, the = patentee=20 was required to show that the structure in the accused = device=20 performs the identical function and had a structure = that is=20 identical or equivalent to the structure from the=20 specification if infringement is to be found. Odetics, Inc. v. = Storage=20 Technology Corp., 185 F.3d 1259, 1267 (Fed. Cir.=20 1999).

Serving up the =E2=80=9Cmeans for = metering oil=E2=80=9D=20 claim term, the Court identified the function as = supplying oil=20 in a regulated or measured amount using the structure=20 including a squeezable trigger valve having a nozzle. = However,=20 the accused device used a dipstick and a pump to = perform this=20 identical function. It was concluded that no = reasonable fact=20 finder could find the pump/dipstick assembly identical = or=20 equivalent to a squeezable trigger.

Next the = Court=20 construed the function of the =E2=80=9Ccontrol = means=E2=80=9D to include both=20 =E2=80=9Cselectively operating the filtering, waste, = supply and fryer=20 valve means=E2=80=9D and =E2=80=9Cselecting a = path.=E2=80=9D A series of push-pull=20 knobs and an automated system of microprocessor = controls were=20 identified as the structures performing these = functions.=20 Although the Court noted that the dipstick assembly in = the=20 accused device may be an acceptable alternative to the = structure disclosed in the specification, the Court = held that=20 it was not equivalent because the dipstick assembly = operates=20 in a substantially different way because the dipstick = assembly=20 utilized an electrical switch to start and stop a pump = whereas=20 the push-pull knobs were manually activated. As a = result, the=20 Federal Circuit affirmed the District Court=E2=80=99s = grant of summary=20 judgment of = non-infringement.

Wyeth=20 and Elan Pharma International, Ltd. V. Under Sec. of = Commerce=20 for Intellectual PropertyFederal=20 Circuit rules that the USPTO has been incorrectly = calculating=20 patent term adjustment

Federal Circuit, = 2009-1120,=20 January 7, 2010

Author: Travis B. = Ribar=20

In a resounding rebuke to the USPTO, the = Federal=20 Circuit ruled that the USPTO=E2=80=99s interpretation = of the Patent=20 Term Adjustment statute (35 U.S.C. =C2=A7 154) was = incorrect,=20 siding with a patentee who argued that the USPTO had=20 improperly denied it about 300 days of patent term. = The case=20 means that patentees may be owed more patent term than = previously calculated by the USPTO. This is a = significant=20 ruling, particularly for the biotech and = pharmaceutical=20 industry.

At issue in Wyeth were two types of = USPTO=20 delay which extend the life of a patent. The = =E2=80=9Cfirst=E2=80=9D type=20 involves delay by the USPTO for missing examination = deadlines=20 (e.g, issuing a first Office Action within 14 months = of the=20 application date). The =E2=80=9Csecond=E2=80=9D type = involves delay resulting=20 from the issuance of a patent over three years past = its=20 application date. 35 U.S.C. =C2=A7 154 requires that = patentees be=20 compensated for USPTO delay by receiving extended = patent term=20 =E2=80=93 one day for every day of USPTO delay = (discounting any=20 applicant delay).

The USPTO argued that under = the=20 statute, some of the =E2=80=9Csecond=E2=80=9D delay = could be ignored because=20 the =E2=80=9Cfirst=E2=80=9D delay contributed to the = =E2=80=9Csecond=E2=80=9D delay. In other=20 words, if the USPTO issued an Office Action more than = 14=20 months after the application date, then it would be = unlikely=20 that the patent would issue within three years, even = with no=20 delay by the USPTO. Thus, the USPTO was interpreting = the=20 statute to deny patentees some of the = =E2=80=9Csecond=E2=80=9D delay that they=20 were owed.

The Federal Circuit flatly rejected = the=20 USPTO=E2=80=99s position, calling it a = =E2=80=9Cstrained interpretation=E2=80=9D of=20 the statute and stating that =E2=80=9CSection = 154(b)=E2=80=99s language is=20 clear, unambiguous, and intolerant of the PTO's = suggested=20 interpretation.=E2=80=9D Thus, the USPTO=E2=80=99s = calculations of patent=20 terms prior to Wyeth have been incorrect for some = issued=20 patents.

Of practical importance to patentees = is that=20 Wyeth may permit patentees to obtain patent = term=20 extensions previously denied by the USPTO. The most = common=20 instance of when additional patent term may be owed to = a=20 patentee is in the case of a patent which both (1) = issued more=20 than three years after its filing date; and (2) = received a=20 first Office Action more than 14 months after its = filing date.=20 If these conditions are met, the patent may be = eligible to=20 receive additional patent term. The USPTO has = implemented=20 temporary procedures to accommodate the Federal = Circuit=E2=80=99s=20 Wyeth ruling. Namely, for any patent issued = (1)=20 within the past 180 days; and (2) prior to March 2, = 2010,=20 patentees may submit a one page form to the USPTO = requesting=20 that it recalculate the patent term in view of = Wyeth.=20

The USPTO expects to have its computer system = updated=20 by March 2, 2010 to address the Wyeth ruling = on=20 patents issuing after that = date.

Schindler=20 Elevator Corp v. Otis Elevator = Co.Carefully=20 Select Arguments to Reduce the Risk of Unduly Limiting = Claims=20 Later

Federal Circuit, = 2009-1146,=20 January 15, 2010

Author: Kevin = Kunzendorf=20

Schindler sued Otis for infringement of its = patent=20 related to automatic calling of elevators. In = Schindler=E2=80=99s=20 claimed system, each user is provided with a device = such as an=20 access card on which the user=E2=80=99s desired floor = is stored. When=20 the user walks into a reception area of the building, = a reader=20 automatically recognizes and reads the device, and the = elevator is called and directed to the floor specified = by the=20 device.

At issue in the case was what, if = anything,=20 the user had to do in order to have the device = recognized and=20 read. Otis=E2=80=99 allegedly infringing elevator = system is installed=20 in one of the World Trade Center buildings in New York = City. A=20 user walks through a turnstyle, and must place an RFID = card=20 over a reader device as the user walks through the = turnstyle.=20 The elevator is then called for the user based on the = floor=20 information stored in the RFID card.

The = district=20 court construed the claim terms =E2=80=9Cinformation = transmitter=E2=80=9D and=20 =E2=80=9Crecognition device=E2=80=9D which correspond = to the RFID card and the=20 reader discussed above, to be devices that operate = =E2=80=9Cwithout=20 requiring any sort of personal action by the = passenger=E2=80=9D. That=20 is, under the district court=E2=80=99s claim = construction, the devices=20 were required to operate merely by the user walking = into the=20 reception area. Accordingly, the district court found = that=20 Otis=E2=80=99 elevator system did not infringe because = Otis=E2=80=99 system=20 required the user to move the RFID card and physically = hold=20 the RFID card over the reader device as the user goes = through=20 the turnstyle.

In reviewing the district = court=E2=80=99s claim=20 construction, the Federal Circuit performed a fairly=20 straightforward analysis of the intrinsic evidence, = that is,=20 the claim language, the specification, and the = prosecution=20 history, and reversed, holding that the district court = erred=20 in construing the disputed terms too narrowly. =

The=20 Federal Circuit=E2=80=99s review of the claim = construction turns on=20 facts specific to the claim language used in this = case.=20 Accordingly, it is difficult to identify particular = takeaways=20 that clients should keep in mind when drafting and = prosecuting=20 other cases.

However, a concurring opinion = discusses=20 one aspect of prosecution history disclaimer that is = worth=20 noting. It is that a disclaimer cannot be avoided by = pointing=20 out that the prior art could have been distinguished = on=20 another ground. That is, the patentee is held to the = scope of=20 what they ultimately claim and the statements they = make on the=20 record, and are not allowed to later assert that = claims should=20 be construed to surrender only what was necessary to = avoid the=20 prior art.

During prosecution, the Examiner = applied=20 prior art that involves a system whereby the user = activates a=20 transmitter by entering a code, and the transmitter = then=20 signals the recognition device. The concurring opinion = notes=20 that the Applicant could have distinguished this art = solely on=20 the ground that in the claimed invention the reader = senses the=20 transmitter, that is, the signal is transmitted from = the=20 recognition device to the transmitter. However, the = Applicant=20 did not do so. Rather, the Applicant emphasized that = the=20 patented device was distinguishable both because of = the signal=20 direction and because it was hands free and automatic. =

Accordingly, clients should remember to be = careful=20 about making unnecessary arguments. There may be many = ways in=20 which a claim is distinguishable from the prior art. = However,=20 the prudent applicant will make only the bare minimum = argument=20 needed to distinguish the claim because any additional = arguments could be used against the Applicant at a = later=20 date.

Boehringer=20 Ingelheim Int=E2=80=99l GMBH, et al. v. Barr = Laboratories, Inc., et=20 al.Federal=20 Circuit Expands Safe Harbor Provision of 35 U.S.C. = =C2=A7 121

Federal Circuit, = 2009-1032,=20 January 25, 2010

Author: Ryan Corbett=20

Obviousness-type double patenting = rejections may=20 be overcome in at least two ways: (1) filing a = terminal=20 disclaimer before the=20 parent patent expires; and (2) by virtue of the = safe=20 harbor provision of 35 U.S.C. =C2=A7 121, assuming the = divisional=20 application claims subject matter not elected in the = parent=20 application. In Boehringer, the Federal = Circuit=20 expanded the safe harbor provision by not requiring = that each=20 divisional application only claim a single independent = invention identified in a restriction requirement = issued in=20 the parent application. The safe harbor provision was = also=20 expanded by the majority=E2=80=99s broad = interpretation of when an=20 application is filed =E2=80=9Cas a result of=E2=80=9D = a restriction=20 requirement.

Boehringer owns U.S. Patent No. = 4,886,812=20 (=E2=80=9Cthe =E2=80=98812 patent=E2=80=9D) that = covers its drug for treating=20 Parkinson=E2=80=99s disease, Mirapex. The =E2=80=98812 = patent issued from U.S.=20 Patent Application No. 07/256,671 (=E2=80=9Cthe = =E2=80=98671 application=E2=80=9D),=20 which is the last of three related applications. = During=20 prosecution of the grandparent application, U.S. = Patent=20 Application No. 06/810,947 (=E2=80=9Cthe =E2=80=98947 = application=E2=80=9D), a=20 restriction requirement was issued that identified ten = groups=20 of claims that were considered independent and = distinct=20 inventions. The applicant elected, prosecuted, and was = granted=20 U.S. Patent No. 4,731,374 (=E2=80=9Cthe =E2=80=98374 = patent=E2=80=9D) on groups 2 and=20 9.

While the =E2=80=98947 application was = pending, the=20 applicant filed U.S. Patent Application No. 07/124,197 = (=E2=80=9Cthe=20 =E2=80=98197 application=E2=80=9D) as a divisional of = the =E2=80=98947 application.=20 The =E2=80=98197 application was directed to groups 8 = and 10, and=20 ultimately issued as U.S. Patent No. 4,843,086 = (=E2=80=9Cthe =E2=80=98086=20 patent=E2=80=9D). While the =E2=80=98197 application = was pending, the =E2=80=98671=20 application (which matured into the =E2=80=98812 = patent) was filed as=20 a divisional of the =E2=80=98197 application. The = =E2=80=98671 application=20 covered groups 1, 3, 4, and 5, and issued as the = =E2=80=98812 patent=20 approximately six months after the =E2=80=98086 patent = issued. After=20 the =E2=80=98812 patent issued, Boehringer applied for = and was granted=20 a patent term extension under 35 U.S.C. =C2=A7 156 = extending the=20 =E2=80=98812 patent=E2=80=99s expiration date by 1,564 = days from December 12,=20 2006 to March 25, 2011.

Mylan Pharmaceuticals, = Inc.=20 (=E2=80=9CMylan=E2=80=9D) and Barr Laboratories, Inc. = (=E2=80=9CBarr=E2=80=9D) each filed=20 Abbreviated New Drug Applications (ANDAs) for generic = versions=20 of Mirapex. Boehringer sued Mylan and Barr in the U.S. = District Court for the District of Delaware for = infringement=20 of the =E2=80=98812 patent. Mylan argued that the = asserted claims of=20 the =E2=80=98812 patent were invalid for = obviousness-type double=20 patenting in view of the =E2=80=98086 patent. On the = last day of=20 trial, Boehringer attempted to overcome the = obviousness-type=20 double patenting defense by filing a terminal = disclaimer of=20 the =E2=80=98812 patent. The terminal disclaimer = purported to disclaim=20 only the approximately six months of the =E2=80=98812 = patent=E2=80=99s=20 original term that extended beyond the =E2=80=98086 = patent term, and=20 then apply the 1,564-day extension to this shortened = original=20 term.

The district court found that the = terminal=20 disclaimer was ineffective to overcome the = obviousness-type=20 double patenting defense because the disclaimer was = filed=20 after the =E2=80=98086 patent had expired. The = district court also=20 rejected Boehringer=E2=80=99s argument that the = safe-harbor provision=20 of 35 U.S.C. =C2=A7 121 precluded the use of the = =E2=80=98086 patent as an=20 invalidating reference, and held that the =E2=80=98812 = patent was=20 invalid for obviousness-type double patenting. =

On=20 appeal, the Federal Circuit confirmed that a terminal=20 disclaimer filed after the expiration of the earlier = patent=20 over which claims have been found obvious cannot cure=20 obviousness-type double patenting. The Court noted = that the=20 doctrine of obviousness-type double patenting = precludes the=20 improper time-wise extension of the right to exclude = for the=20 same invention or an obvious modification thereof. By = allowing=20 the later patent to remain in force, the patentee = improperly=20 notifies the public that the public is precluded from = making,=20 using, selling, offering for sale, or importing the = claimed=20 invention after the earlier patent has expired. = Boehringer=E2=80=99s=20 failure to file the terminal disclaimer before the = =E2=80=98086 patent=20 expired gave Boehringer the unjustified advantage of a = purported extension of the right to exclude. Since = Boehringer=20 has already enjoyed this unjustified extension of the = =E2=80=98086=20 patent term, retroactively disclaiming the term of the = =E2=80=98812=20 patent does not remedy the improper extension. =

The=20 Court also noted that even though Boehringer obtained = a proper=20 patent term extension under 35 U.S.C. =C2=A7 156, = Boehringer still=20 enjoyed an unjustified advantage because a = patentee=E2=80=99s rights=20 during a =C2=A7 156 extension term are narrower than = during the=20 original patent term. Thus, the Federal Circuit agreed = with=20 the district court that the terminal disclaimer did = not=20 overcome the obviousness-type double patenting = defense.=20

However, the Federal Circuit disagreed with = the=20 district court=E2=80=99s application of the safe = harbor provision of=20 35 U.S.C. =C2=A7 121. The safe harbor provision = states, =E2=80=9C[a] patent=20 issuing on an application with respect to which a = requirement=20 for restriction under this section has been made, or = on an=20 application filed as a result of such a requirement, = shall not=20 be used as a reference=E2=80=A6 against a divisional = application or=20 against the original application or any patent issued = on=20 either of them.=E2=80=9D The Court first ruled that = both the=20 challenged patent (the =E2=80=98812 patent) and the = reference patent=20 (the =E2=80=98086 patent) must be filed =E2=80=9Cas a = result of=E2=80=9D the=20 restriction requirement in the =E2=80=98947 = application.

The=20 majority also held that, even though the =E2=80=98812 = patent resulted=20 from a divisional of the parent =E2=80=98197 = application and not the=20 grandparent =E2=80=98947 application, the =E2=80=98812 = patent issued =E2=80=9Cas a=20 result of=E2=80=9D the restriction requirement in the = grandparent =E2=80=98947=20 application. The safe harbor provision is provided to = protect=20 an application from being penalized for dividing an=20 application. Thus, the Court reasoned that it is = irrelevant=20 whether the applicant chose to file multiple = divisional=20 applications from the grandparent =E2=80=98947 = application, or file=20 successive divisional applications. The restriction=20 requirement in the grandparent =E2=80=98947 = application obligated the=20 applicant to file one or more divisional applications = to cover=20 the non-elected subject matter. Since the claims of = the =E2=80=98812=20 patent could have been retained in the =E2=80=98947 = application but=20 for the restriction requirement, the Court found that = =E2=80=98671=20 child application was filed =E2=80=9Cas a result = of=E2=80=9D the restriction=20 requirement in the =E2=80=98947 application. =

The majority also=20 noted that, for the safe harbor provision to apply, = the claims=20 in a divisional application must be limited to the = non-elected=20 invention or inventions in the application in which = the=20 restriction requirement was made. However, a separate=20 divisional application is not required for each = invention=20 identified in the restriction requirement. The fact = that the=20 =E2=80=98812 patent claims covered groups 1, 3, 4, and = 5 does not void=20 the safe harbor provision, so long as those groups = were not=20 elected in the grandparent =E2=80=98947 application. = Since the =E2=80=98374=20 patent, =E2=80=98086 patent, and =E2=80=98812 patent = do not cross the=20 examiner=E2=80=99s lines demarcating independent = inventions, the=20 majority held that the safe harbor provision applies = to the=20 =E2=80=98812 patent, such that the =E2=80=98086 patent = may not be used to=20 invalidate the =E2=80=98812 patent on obviousness-type = double=20 patenting grounds.

In dissent, Judge Dyk = argued that=20 for the safe harbor provision to apply, each = divisional=20 application must not combine claims that the original = examiner=20 determined were drawn to separate inventions. The = dissent=20 contends that under the majority view, later = divisional=20 applications do not have to comply with the = restriction=20 requirement so long as the original application does. = The=20 dissent also argues that the safe harbor provision = should not=20 apply because the =E2=80=98671 child application was = not filed =E2=80=9Cas a=20 result of=E2=80=9D the restriction requirement. = According to the=20 dissent, nothing in the original restriction = requirement=20 required separating the child =E2=80=98671 application = from the parent=20 =E2=80=98197 application, such that the child = =E2=80=98812 patent should not=20 be protected from the parent =E2=80=98086 patent. =

The=20 Boehringer case offers some practical tips = for=20 handling obviousness-type double patenting rejections. = First,=20 a terminal disclaimer must be filed before the parent = patent=20 expires to overcome an obviousness-type double = patenting=20 rejection. However, if the obviousness-type double = patenting=20 defense is raised in litigation, for example, after = the parent=20 patent has expired, the safe harbor provision applies = as long=20 as the patent resulting from the divisional = application claims=20 subject matter not elected in the parent patent = application.=20 In light of the majority=E2=80=99s opinion, the safe = harbor provision=20 could potentially apply to more divisional = applications and=20 become a more commonly used defense against = obviousness-type=20 double patenting = rejections.

Volume=20 2, Issue 2
February 18, 2010 =

Koninklijke=20 Philips Electronics N.V. v. Cardiac Science Operating=20 CompanyRestaurant=20 Technologies, Inc. v. Jersey Shore Chicken and = Klee=E2=80=99s Bar=20 & GrillWyeth=20 and Elan Pharma International, Ltd. V. Under Sec. of = Commerce=20 for Intellectual PropertySchindler=20 Elevator Corp v. Otis Elevator Co.Boehringer=20 Ingelheim Int=E2=80=99l GMBH, et al. v. Barr = Laboratories, Inc., et=20 al.

AuthorsRaucci, Michael = G.
202-857-2269
mraucci@sughrue.com
= Emery, David = P.
202.663.7956
demery@sughrue.com
Ribar, = Travis
202-775-7531
tribar@sughrue.com
Kunzendorf, Kevin = C.
202.663.7375
kkunzendorf@sughrue.com
Corbett, Ryan = M.
202.857.2245
rcorbett@sughrue.com

Relevant=20 Practice Groups

Biotechnology / Pharmaceutical=20
Chemical Patent=20
Electrical / Mechanical Patent=20
Litigation=20

EDITORS:=20
Brian W.=20 Hannon
bhannon@sughrue.com=20

Carl J.=20 Pellegrini
cpellegrini@sughrue.com=20

ASSOCIATE EDITORS
Dave = Emery
Andrew J. = Taska
Kevin=20 Kunzendorf
Travis = Ribar
Michael = Raucci
Ryan = Corbett=20 =

<= BR>

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