Thursday, April 27, 2006

Law review articles on inherent anticipation

In addition to Smith's article, one has Randy P. Boyer, Schering Corporation v. Geneva Pharmaceuticals, Inc.: Requiem for the Recognition Requirement in the Law of Inherent Anticipation, 14 Fed. Cir. B.J. 677 (2004/2005).

The initial text included the sentence: In an early case, the United States Court of Appeals for the Federal Circuit (Federal Circuit) concluded that prior recognition of an element alleged to be inherent was required in order to substantiate a finding
of inherency. [Continental Can] When again addressing the issue years later, however, the court held that such recognition was not required and, furthermore, was
"irrelevant" to the inherency determination. [Atlas Powder]

Boyer also wrote: In Schering [339 F.3d 1373], the court held that, contrary to what had become the common understanding in the Continental Can Company USA, Inc. v. Monsanto Co. line of precedent, prior recognition by persons skilled in the art was not required to establish inherency.

Boyer's conclusion was: The Federal Circuit seems finally to have lain to rest the conflict over the recognition requirement in the law of inherent anticipation with its firm declaration that recognition in the prior art is not required to
support a finding of anticipation. Although there remains some debate about
whether the Schering decision effectively overrules the common understanding
developed under Continental Can and its progeny, post-Schering decisions seem to
indicate that the court is now undeniably committed to this view.

Boyer did not cite any of my articles.

Cynthia Chen wrote a note: Schering Corp. v. Geneva Pharmaceuticals, Inc.: Clarification of the Inherent Anticipation Doctrine and Its Implications, 20 Berkeley Tech. L.J. 95. She wrote: In Schering Corp. v. Geneva Pharmaceuticals, Inc., the Federal Circuit resolved a long-standing debate in the doctrine of inherent
anticipation - whether recognition of an inherent feature in the prior art is

The CORRECT formulation is "when" is recognition required.

Dan L. Burk and Mark A. Lemley wrote wrote Inherency, which appears in 47 Wm and Mary L. Rev. 371 (Nov. 2005). They cite Cynthia Chen: The right question is whether we are confident that the patented invention was present in the prior art, even if it was not always present. See Cynthia Chen, Schering Corp. v. Geneva Pharmaceuticals,
Inc.: Clarification of the Inherent Anticipation Doctrine and Its
Implications, 20 Berkeley Tech. L.J. 95, 96 (2005)

Of Schering, they wrote: Some commentators have come to the conclusion that after Schering, the only factor required for inherency is proof that the thing was in fact present, n42 but that overstates the case. There are still a number of cases that deny inherent anticipation even when it is clear with hindsight that the invention was present in the prior art. [footnote 42: Miller, supra note 7, at 452-53; Alloway, supra note 7, at 86-87. Note 7 includes: Irving N. Feit
& Christina L. Warrick, Inherency in Patent Law, 85 J. Pat. & Trademark
Off. Soc 'y 5, 21 (2003) (finding a conflict in inherency cases and proposing to
resolve it by focusing on the "objective understanding" of the prior art based
on the timing of disclosure by a person having ordinary skill in the art

The conclusion is cryptic: When, on rare occasions, we are confronted with
the evidence of previous, often unwitting uses of a supposedly new
invention, the inherency doctrine serves to distinguish beneficial from gratuitous
conceit, directing the choice of fiction that will benefit the public most.


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