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« U.S. Trade Representative Releases 2020 Special 301 Report | Main | Idorsia Pharmaceuticals, Ltd. v. Iancu (Fed. Cir. 2020) »

May 11, 2020

Comments

The opinion contains statements of the type that a first-year associate might be allowed to make once, in her first draft opinion, and then be forbidden from making again, e.g. "Slayback conceded that its generic product literally infringes all claim limitations except for the “pharmaceutically acceptable fluid” limitation".

How long until Judge Reyna retires?

I had a look for family members at the EPO.

EP-B-2528602 was opposed by four different parties but has been maintained in narrowed form.

Div EP-A-3158991 is going through its grant stages. Presumably the prosecution benefitted from all the experience gained in those opposition proceedings. Presumably then, the allowed claims of the Div are potent.

Thanks, Max

Atari Man, I'm not sure I understand the exact nature of your criticism, specifically for the example statement you gave. Are you saying that it would have been more precise to write that the only disputed limitation is really just the PG element of the pharmaceutically acceptable fluid (PAF), because apparently Slayback concedes all the other PAF elements? If so, I can see your point as a general matter, but in the specific context here, I do think it makes sense to treat PAF as a whole as the limitation. That allows contrast with how PAF is described in the spec, in a way that focusing just on PG wouldn't. If not, could you please clarify?

You don't infringe a claim element, you infringe a claim. That's patent law 101. But who cares if a CAFC judge doesn't know that?

Read the decision and you'll find other examples.

A.M., sorry, still not quite following here. You're certainly right that the ultimate cause of action in an infringement case is whether an entire claim is infringed, not just certain limitations. But unless I'm missing something, it's also "patent law 101" that the infringement analysis for a particular claim proceeds on a limitation-by-limitation basis. In this case, that point was addressed in the district court's opinion (I have no way of attaching the opinion here, but opinions can be retrieved from PACER free of charge) by the following citation on page 4: "If Slayback's drug does not meet this limitation, then it cannot be said to infringe the asserted patent claims. See TEK Glob., S.R.L. v. Sealant Sys. Int 'l, Inc., 920 F .3d 777, 788 (Fed. Cir. 2019) (to infringe an asserted patent claim, the accused product must meet all the limitations of the asserted claim)." Similarly, although I'm not sure if these are actually used in practice, it's possible to find a link to the ABA Model Patent Jury Instructions on the district court's website (see link below). Pages 42-43 have the instruction for direct infringement when DoE is at issue (as it is in this case). The very first sentence on page 42 notes that: "In order to infringe a patent claim, a [product or process] must include every limitation of the claim." Numerous SCOTUS and CAFC authorities are cited at the bottom of page 43.

https://www.ded.uscourts.gov/sites/ded/files/chambers/ABAModelPatentJuryInstructions.pdf

On the one hand, if you disagree with this entire analytical framework - and if so, then I'm curious as to what your suggested alternative is - then I think your quibble is not just with a particular judge, but with the framework itself and all the supporting authorities.

On the other hand, if the entirety of your critique is merely sloppy drafting in using the term "infringed" as convenient shorthand for saying that a limitation is "included", "present", "met", "satisfied", etc., then, with respect, I'm going to have to disagree. That shorthand is widely used and universally understood, so I don't think it's even slightly problematic.

But again, let me know whether I missed something. I'm making best efforts to respond, but you haven't put much meat on the bones so far, which makes it challenging.

Thanks.

Sloppy drafting.

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