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« Court Report | Main | Not Everyone Thinks "Patent Reform" is a Great Idea -- Updated »

April 06, 2009


So what is the fate of the claims in the re-examination that were found to be patentable? Is there any overlap between the claims asserted in the litigation (all, most, some, certain ones) and those claims? Ultimately, my question is: are there any claims in the '516 patent left for Ariad to assert?

Dear Moondoggie,

The reexamination has not concluded, so it would be premature to say anything about the fate of the claims of the '516 patent as a result of that proceeding. As mentioned in the post, the patent owners have filed a Notice of Appeal with the Board in view of a final rejection by the examiner. It could be some time before a Reexamination Certificate is issued. However, all four claims that were at issue in the present litigation (80, 95, 144, and 145) were rejected by the Examiner.

As for your ultimate question, it depends on what you are asking exactly. If you are asking whether claims will emerge from the reexamination proceeding, the answer is likely yes. If you are asking whether any of the claims as presently found in the '516 patent will survive, it is unclear at this point (which is important because any claim that is added or amended during reexamination is subject to intervening rights). What is unclear from your question, however, is the party you are asking about that Ariad would be able to assert claims against. Are you asking about Lilly, or are you asking whether there is any company that Ariad would be able to assert claims against? And perhaps it is better phrased whether there is any company that Ariad would be able to assert claims against and have a reasonable likelihood of success. At this time, however, the answer is that it is likely that claims will survive that Ariad could possibly assert in some future litigation, but I wouldn't want to speculate on the scope of those claims, much less speculate on whether anyone is practicing (or at least arguably practicing) the scope of those claims. Also, please keep in mind that even if claims survive the reexamination proceeding, there is no guarantee that they will survive a validity challenge in Federal Court should Ariad choose to assert them.

Kevin: "Interestingly, the Federal Circuit commented on how broad the claims were, and appeared to take Ariad to task for maintaining such breath through claim construction and into trial. However, the Court appeared to ignore the fact that Ariad was forced to seek such a broad claim construction in order to maintain infringement suits against such diverse pharmaceuticals as Evista, a small molecule, and Xigris, a recombinant human protein."

LOL. Who "forced" Ariad to sue all those entities?

Dear Keep It:

I think the sentence in its entirety makes the point: if Ariad did not ask for such a broad claim construction they would have had no infrigement case. Since patents are not novelty items or trophies, it makes sense that they would try to enforce them; unfortunately for them, the claims were not sufficiently supported by what the inventors knew and put in their specification.

Remembering this was a stellar cast of inventors, we might give Ariad some deference in deciding to press their suit.

Thanks for the comment.

Dear Keep It Real,

This is Andrew responding to your comment. Thanks for your observation. I didn't mean to imply that Ariad was "forced" to sue anybody. I was only noting that Ariad had to walk a fine line between seeking claims broad enough that they could win their infringement suit, but narrow enough that they would survive an invalidity challenge. Of course, this is true of a lot of patent infringement suits, but the court's opinion appeared not to acknowledge this fact.

Andrew: "Of course, this is true of a lot of patent infringement suits, but the court's opinion appeared not to acknowledge this fact."

I guess I don't understand what you mean by "acknowledge this fact." The "fact" we are referring to appears to be the "fact" that businesses (including those run by "stellar inventors") play games with their patents that are sometimes disturbingly aggressive to onlookers.

The Federal Circuit does occasionally "go there" but usually only when making a snide remark (a la "be careful what you wish for") after declaring broad claims invalid for one reason or another.

In any event, I think we agree that no circumstances or entities "forced" Ariad to pursue those broad claims so zealously, just as nobody forced Carl Denham to take King Kong to New York City. But I'm sure this will all turn out profitably for everybody, just like in the movie.

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