The U.S. Court of Appeals for the Federal Circuit has denied a patentee’s petition for rehearing en banc of a panel decision (reported in IP Update, Vol. 9, No. 3; March 2006) that affirmed summary judgment of invalidity based on lack of novelty of SmithKline's patent claiming the product paroxetine, branded as Paxil®, by its process of manufacture. SmithKline Beecham Corp. v. Apotex Corp., Case No. 04-1522 (Fed. Cir. June 22, 2006) (Gajarsa, J.; Newman, J.; Rader, J., dissenting).
The original panel decision held that SmithKline’s product-by-process patent was anticipated by its own product patent and clarified that, once a product is fully disclosed in the art, future claims to that same product are precluded even if that product is claimed as made by a new process. The panel acknowledged, but intentionally side-stepped, the conflict perceived by the district court between Scripps Clinic & Research Foundation v. Genentech, Inc, and Atlantic Thermoplastics Co., Inc. v. Faytex Corp. Judges Newman and Rader, each joined by Judge Gajarsa, separately dissented from the Court’s decision denying rehearing. Judge Newman argued that, when viewed in the contexts in which they arose and to which they apply, Scripps Clinic (novel product capable of description only by the way it is made) and Atlantic Thermoplastics (any product whose production requires use of a certain process) do not conflict.
In dissent, Judge Rader stated that the apparent conflict between Scripps Clinic and Atlantic Thermoplastics has led to confusion that was further perpetuated by the original panel decision’s implication that the specific language of the claims is not relevant to anticipation.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.