Festo applied to URochester patent?

The University of Rochester patent on COX-2 inhibitors was found invalid on summary judgment, which holding was affirmed by the CAFC, with cert denied by the Supreme Court. If claims of a patent are found invalid, the claims cannot be infringed, either literally or under the doctrine of equivalents.

I came across this post at BioIT world:


Consider the example of a patent filed by the University of Rochester for a method of treating inflammation with a non-steroidal prostaglandin inhibitor, which could, according to Palmer & Dodge attorney Kathleen Madden Williams, have provided a basis for infringement actions against two anti-inflammatory drugs—Celecoxib, sold by Pharmacia, and Vioxx, produced by Merck & Co.

Celecoxib—also known as Celebrex—and Vioxx were brought to market before the Rochester patent was issued, but subsequently could be seen to infringe on the patent. Had the Supreme Court upheld the lower court’s Festo ruling (and thereby holding Rochester to the literal wording of its patent), the university would have had great difficulty in attempting to obtain royalties from the two pharmaceutical companies.

Specifically, the university’s final patent was for “a method for selectively inhibiting PGHS-2 [or Cox-2] activity in a human host, comprising administering a non-steroidal compound that selectively inhibits activity of the PGHS-2 gene product to a human host in need of such treatment.” Several amendments preceded patent approval, and the phrase “selectively inhibiting” was not introduced until the final process. This change in language, without regard to technical issues, would have dramatically restricted the scope of Rochester’s patent protection if Festo had been upheld.

[IPBiz post 1774]