In a recent decision of the Federal Circuit (Biogen MA Inc. v. EMD Serono, Inc.) claims reciting methods using a recombinant polypeptide were held to be anticipated by prior art methods using a “native” version of the same polypeptide.
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In two recent cases, the Federal Circuits held that claim amendments at issue were “tangential” to the “equivalent” at issue, and upheld findings of infringement.
The case details are below:
Case #1: Ajinomoto Co. v. ITC
The claim amendment at issue related to an encoding nucleotide sequence. The original claim language recited “a protein which comprises an amino acid sequence including deletion, substitution, insertion or addition of one or several amino acids in the amino acid sequence shown in SEQ ID NO:2,” and was replaced with “a protein which comprises an amino acid sequence that is encoded by a nucleotide sequence that hybridizes with the nucleotide sequence of SEQ ID NO:1 under stringent conditions.”
The Federal Circuit agreed with ITC’s determination that the amendment was “tangential” to the equivalent at issue based on the following:
Thus, according to the Federal Circuit, prosecution history estoppel did not bar application of the doctrine of equivalents.
Case #2: Eli Lilly and Co. v. Hospira, Inc.
During prosecution, the language of administering “pemetrexed sodium” was amended to administering “an antifolate” to distinguish the claims from a prior art reference.
The accused products contained pemetrexed ditremethamine, not pemetrexed sodium, but the Federal Circuit found that the amendment was “tangential” to the equivalent, and thus prosecution history estoppel did not apply.
The amendment was not related to the type of salt, thus, the applicant did not surrender other pemetrexed salts.
Final Thoughts
Even if within these cases it was possible to find infringement under the doctrine of equivalents, it should be kept in mind that where the reason for the amendment and the equivalent in question both relate to the same claim element, the tangential exception does not apply.
Please contact me at silvia@salvadorilaw.com with questions or comments.
Silvia Salvadori, PhD
{3 minutes to read} In a new case, Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., the Federal Circuit affirmed the lower court’s decision finding of patent infringement under Akamai. The appeal arose from an Abbreviated New Drug Application (ANDA) litigation describing to take ALIMTA® [pemetrexed sodium] with folic acid and vitamin B12 to reduce side effects.
The patent at issue, U.S. Patent No. 7,772,209, contained two independent claims which recite, inter alia, to administer pemetrexed disodium together with folic acid and a methylmalonic acid. Continue reading
A transitional application is a non-provisional application that was filed on or after March 16, 2013 and claims “foreign priority” or “domestic benefit” of an application filed before March 16, 2013.
The particularity of these transitional applications is that they can be examined either under pre-America Invents Act (AIA) rules, or according to the new AIA regulations. Why is that? Continue reading
There are two new declarations that were created by the The America Invents Act (AIA). One is the Declaration of Attribution (130(a) declaration) and the other is the Declaration of Prior Public Disclosure (130(b) declaration). These declarations provide ways to prove the 102 exceptions within the AIA statute.
The first declaration, declaration of attribution under 37 C.F.R. 130(a), is used to prove that a potential prior art subject matter was originated by one or more members of the inventive entity, that is, the disclosure was originated by one of the inventors. Continue reading