Federal Circuit Finds Print Advertisement Contains an Enabling Disclosure Sufficient to Invalidate Claims Under 35 U.S.C. §102(b)

In Iovate Health Sciences, Inc. vs. Bio-Engineered Supplements & Nutrition, Inc., 92 USPQ2d 1672 (Fed. Cir. 2009), Iovate is the exclusive licensee of U.S. Patent No. 6,100,287 (the ‘287 patent).  The ‘287 patent is assigned to the University of Florida Research Foundation, Inc.  The ‘287 patent was filed on Nov. 13, 1998 and claims priority from a provisional application filed on Nov. 13, 1997.  The invention is directed to using nutritional supplements containing a ketoacid and either a cationic amino acid or a dibasic amino acid to improve muscle performance or recovery from fatigue. Claims 2, 5, 7 and 8 of the ‘287 patent disclose various features defining the composition recited in claim 1, which recites “A method for enhancing muscle performance or recovery from fatigue wherein said method comprises administering a composition comprising a ketoacid and an amino acid wherein said amino acid is cationic or dibasic.”  Additionally, claim 9 recites orally administering the composition, and claim 18 recites

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Federal Circuit Finds Clinical Trials Are Not Public Use Where the Drug Was Not Ready for Patenting at the Time of Use

In In Re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008), Astrazenca AB, et al. (Astra) owns U.S. Patent No. 4,786,505 (‘505 patent) and U.S. Patent No. 4,853,230 (‘230 Patent).  The ‘505 patent and the ‘230 patent are directed to omeprazole.  Omeprazole is the active ingredient of Prilosec® and is intended to treat gastrointestinal disorders by inhibiting secretion of gastric acid.  Omeprazole degrades in acid-reacting and neutral media and is also unstable when exposed to moisture and organic solvents.  To overcome the issues facing omeprazole, an enteric coating can be used to cover the drug core to protect omeprazole from gastric acid.  However, enteric coatings contain acidic compounds that will degrade the drug while in storage.  To increase drug stability in storage, the ‘505 and ‘230 Patents add an Alkaline Reacting Compound (“ARC”) to the drug core. Impax, on Dec. 31, 1999, sought Food & Drug Administration (FDA) approval to sell 10 and 20 mg generic versions of Prilosec®. 

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Federal Circuit Disallows Experimental Use Exception In Evaluation Sale of Prototypes

In Atlanta Attachment Company v. Leggett & Platt, Inc., 516 F3d 1361, 85 U.S.P.Q.2d 1995 (Fed. Cir. 2008), Atlanta Attachment manufactures commercial sewing machines.  Atlanta Attachment and Sealy, Inc. entered into an agreement under which (1) Atlanta Attachment would develop an automatic gusset ruffler machine for Sealy, (2) if successful, Sealy would patent the machine, (3) if successful, Atlanta Attachment would only sell to Sealy, and (4) Atlanta Attachment would keep the development of the machine confidential.  At trial, both Atlanta Attachment and Sealy stated that both were expected to keep the development of the machine confidential.  Atlanta Attachment provided four prototypes to Sealy in succession, each of the prototypes embodying improvements suggested by Sealy. Relevant to the issues herein, Atlanta Attachment provided a quotation for the third prototype to Sealy in September of 2000 and sales orders including quotations for sales of the third prototype on November 30, 2000, and February 5, 2001.  Sealy paid the February 5, 2001

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Federal Circuit Finds Testing of Prototype And Publication About Test Are Experimental And Not Public Use or On Sale Bars under 35 U.S.C. §102(b)

In its opinion in Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982 ;82 U.S.P.Q.2d 1886 (Fed Cir. 2007), the United States Court of Appeals for the Federal Circuit affirmed in part, vacated in part, and remanded the Delaware District Court’s decision invalidating certain claims and finding no infringement of Honeywell patents involving aviation electronic and terrain warning systems.  Background In the field of terrain warning technology for aviation, known “ground proximity warning systems” (GPWSs) have significantly reduced accidents resulting from planes flying into terrain since the 1970’s.  GPWSs use radio waves to measure the distance from the plane to the ground, which worked well for gradual changes in terrain.  However, GPWSs do not provide information regarding the terrain in front of a plane.  As a result, Honeywell began research in the 1980 to develop a “look ahead” terrain warning system.  Honeywell came up with a virtual system, which compared the plane’s position with a map of the

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Federal Circuit Finds No Public Use

In Motionless Keyboard Co. v. Microsoft et al., 486 F.3d 1376; 82 U.S.P.Q.2D 1801  (Fed. Cir. 2007), Motionless appealed a summary judgment finding that there was no infringement of Motionless’ two keyboard patents, U.S. Patent No. 5,332,322 (the ‘322 patent) and U.S. Patent No. 5,178,477 (the ‘477 patent), based on claim construction and finding that the patents were invalid based on public use and the later patent invalid for obviousness.  Motionless appealed the claim construction ofU.S. the ‘322 patent and the finding of invalidity of the ‘477 patent, and the 322 patent. The Federal Circuit affirmed the narrow claim construction, construing “a concavity in said housing at said key actuation position, and a thumb-associable cluster of keys forming a keyboard within said concavity” to mean a depression within the housing within which the keys were placed.  This claim construction was supported by the specification and the renderings.  The Federal Circuit reversed the public use application in this case because the

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