Patent claims interpretation

Warner-Lambert Company, LLC v (1) Actavis Group PTC EHF (2) Actavis UK Limited (3) Caduceus Pharma Limited, 28 May 2015 (England and Wales Court of Appeal)

In this decision on interim relief for alleged patent infringement, the Court of Appeal construed the scope of a pharmaceutical patent claim in "Swiss" format, which is typically phrased as a process claim for the use of a compound in the production of a medicine for use in a particular therapeutic indication (new medical use claim)

Case Summary

Scripps Clinic Research Foundation v. Genentech Inc Scripps Clinic & Research Foundation (1991) (U.S. Court of Appeals)

The Federal Circuit remanded for trial (further clarification of facts) to the district court a number of motions for summary judgment regarding the validity and the infringement of certain product claims and product-by-process claims. The Federal Circuit inter alia decided that in litigation (concerning patent infringement and validity), patent claims must be construed in a similar manner as under patent prosecution (concerning the grant of a patent).

Pharma Dynamics (Pty) Ltd v. Bayer Pharma AG, 2014 (The Supreme Court of Appeals of South Africa)

In this case, the Supreme Court of Appeals interpreted the claims of a pharmaceutical divisional patent and examined its novelty and inventive step. The Court also provided guidance on the admissibility of divisional patents under South African law.

In re Harnisch 631 F.2d 716 (C.C.P.A. 1980) (United States Court of Customs and Patent Appeals)

The United States Court of Customs and Patent Appeals (CCPA), which was the predecessor of the United States Court of Appeals for the Federal Circuit reversed a decision by the United States Patent Office (USPTO) to reject a patent application on the basis of alleged improper use of the “Markush claims” format. The CCPA confirmed unity of the claimed invention at issue and therefore considered the Markush claims format as being properly used.

In re Donald H. THORPE, et al. Appeal No. 85-1913 (United States Court of Appeals, Federal Circuit. Nov. 21, 1985)

The Federal Circuit affirmed the rejection by the US Patent and Trademark Office (USPTO) of a number of product-by-process claims based on the lack of novelty of the claimed product. Patentability of product-by-process claims is determined on the basis of the product, not the process.

Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002)

The United States Supreme Court ruled that amending (i.e. narrowing) a patent claim during prosecution does not necessarily result in a complete bar to the doctrine of equivalents. It rejected the Federal Circuit’s decision that a complete bar to equivalents always results when a claim is narrowed during prosecution and thereby confirmed its own case law.

Elan Transdermal Ltd v Ciba Geigy (PTY) Ltd 1994 BP 1 (Court of the Commissioner of Patents, South Africa)

The Court of the Commissioner of Patents in this decision focused on two main issues: (1) the protection of new medical uses of known products under South African patent law and (2) the requirements for prior art to destroy novelty by anticipation.

Atlantic Thermoplastics Co., v. Faytex Corp. (United States Court of Appeals, Federal Circuit, Jul 13, 1992. 970 F.2d 834 (Fed. Cir. 1992)

The Federal Circuit deviates from earlier precedent (Scripps Clinic, see case summary) in applying different treatment to patent claims in the context of patent prosecution on the one hand and in the context of patent litigation on the other hand. This case concerns in particular the scope of product-by-process claims. It also provides a useful illustration of how to examine infringement of a process claim in terms of literal infringement and the doctrine of equivalents.

Akamai Technologies, Inc., The Massachusetts Institute of Technology v. Limelight Networks, Inc. (US Court of Appeals for the Federal Circuit, 13 May 2015)

In this decision, the United States Court of Appeal for the Federal Circuit confirmed earlier case law by stating that direct infringement of a process patent requires all of the steps of the claim to be performed by a single entity or to be at least attributable to a single entity.

Case Summary