Teva v astrazeneca invalidating a patent with secret prior art
Robert Stoll, who recently retired as Commissioner for Patents at the USPTO, is slated to open the program with a PTO keynote address. Nemec (Skadden, Arps, Slate, Meagher & Flom LLP) and John M. court system is well established, but recent patent law cases have challenged this hierarchy with the power of government agency – the USPTO to be exact. Scott explains the patent law issue: Patent reexamination is often initiated in parallel with an ongoing infringement litigation.
Commissioner Stoll is expected to report the latest developments regarding the PTO’s on-going implementation of the America Invents Act and other critical PTO developments. White (Berenato & White; Director of Patent Professional Development, Practising Law Institute) will navigate attendees through 6 exciting plenary sessions that discuss the practice impacts of recent Supreme Court and Federal Circuit decisions, AIA changes, current critical patent issues from the corporate counsel perspective, views from the District Court bench, the never-ending PTO changes and for good measure, an hour of legal ethics credit! Scott Mc Keown, Partner at Oblon, Spivak, Practice Center Contributor and author of Patents Post Grant Blog, recently wrote two articles concerning the USPTO’s reexamination process and how its parallel nature to patent infringement cases resulted in conflict that’s occurred with the U. Court of Appeals of the Federal Circuit (CAFC) as well as with the U. In the case of a parallel inter partes proceeding (IPX), the first of the proceedings to conclude (litigation or IPX) controls the outcome of the other by operation of statutory estoppel.
Na , Mg 2 , Li , K , Ca 2 or N (R)4 salts of ( )-[omeprazole] and (-)-[omeprazole], where R is an alkyl with 1–4 carbon atoms. The Abstract, though not grammatically a sentence, confirms the limiting disclaimer by identifying what Astra Zeneca said was “novel”: “The novel optically pure compounds Na , Mg 2 , Li , K , Ca 2 or N (R)4 salts of ( )-[omeprazole] or (-)-[omeprazole], in particular sodium and magnesium salt form thereof …” Id., Abstract. After the Court concluded that the “ready for patenting” prong of Pfaff had been satisfied, the sole issue was whether there was public access to the invention.
Those statements clearly confine the invention to the six identified cations, disclaiming anything else. Because samples were sent to a doctor without restriction and that doctor tested those samples, the Court concluded there had been an invalidating public use.
A chart summarizing the more interesting of these cases is set forth below. The District Court granted summary judgment based up a claim construction of the term “essentially free.” The Court ruled that, based upon the prosecution history, “essentially free” meant “less than 0.25%.” The defendant’s ANDA called for not more than 0.6%, or in other words, from 0.0% to 0.6%.