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« Hartig Drug Co. v. Senju Pharmaceutical Co. (3d Cir. 2016) | Main | Supreme Court IP Review »

September 08, 2016

Comments

Don, thanks for the write-up.

This case is of mild personal interest to me b/c the third-named inventor was my wife's PhD advisor.

I find the case of general interesting as a reminder of the dangers that lurk with trying to shoehorn into the claims things that have suspect (or no) support in the specification. Had Yeda refrained from trying to introduce those claims, the claims still might have been construed as covering only hybridoma-produced MAbs, but at least the argument would have been available to Yeda.

This is the fourth knock for Yeda in the past month. In PTAB IPR decisions it lost three patents that it licensed to Teva that cover formulations of Copaxone, Teva's drug for multiple sclerosis.

"Be careful what you ask for" has always been relevant to patent prosecution, but this is a new twist. Had Yeda never filed those extra claims, they'd not be estopped now, which to me is an illogical result. (The examiner had conceded that non-murine antibodies were enabled.)

As for the "general rule" put forth by the court, "A patent applicant cannot later obtain scope that was requested during prosecution, rejected by the Examiner, and then withdrawn by the applicant," that doesn't seem to fit the case. The new claims could - and should - have been dependent claims (the file history isn't public), in which case they did not present a request for additional scope.

I agree, that's really an unfortunate result. Chimeric antibodies are definitely within the scope of "monoclonal" antibodies. Had the applicant been less aggressive during prosecution, this may have gone a different direction during litigation. Any grad student, much less a PHOSITA, could tell you that a chimeric antibody is monoclonal.

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