Wednesday, March 16, 2005

Todd Miller on inherent anticipation in AIPLA Q. J.

Todd R. Miller of Jones, Day has an article on inherent anticipation in 32 AIPLA Q. J. 425 (2004).

The conclusion:

-->Not surprisingly, courts often decide who is going to win and then fit the law to the facts of the case. [LBE note: agreed. See Apotex case.] This approach is not the best course to take in any situation. As the fact pattern posed herein illustrates, issues arise where "trace amounts" or impurities of a patented compound are coproduced as a by-product of a process. Should a court hold the accused infringer liable for infringement for the involuntary creation of the patented compound in quantities so minute as to be of no therapeutic, manufacturing, or other commercial significance, and in an amount that would be undetectable by an means known atthe time the patent was applied for and issued? Should a court instead commit "claim construction heresy" to avoid liability? Should a court manipulate the anticipation test to give the accused infringer a better chance of escaping literal infringement? Or should a court rely on the possibility of a de minimis exception to infringement, the reverse doctrine of equivalents, or a limitation of remedies as a means to an end? The function of patent claims is to put the public on notice of the patentee's intellectual property rights. The canons of claim construction are in place to help guide the public as to the proper meaning of the claim language. If the canons of claim construction are not applied or are applied incorrectly, the public's ability to determine the scope of protection blurs. Consequently, manipulating the canons of claim construction, for whatever reason, is not recommended.

Similarly, the laws regarding anticipation and infringement should also be followed. While it is true that there maybe an inconsistency in the law regarding accidental inherent anticipation and accidental literal infringement, manipulating the test for anticipation to remove invariability as a requirement is not a recommended course. This is particularly true in light of the fact that recognition already seems to have been eliminated as a requirement for inherent anticipation, and this would eliminate the last difference between express and inherent anticipation. Accordingly, a court should not attempt to "even the playing field" even more by permitting the accused infringer to utilize a prior art disclosure to anticipate the patent and render it invalid where the court finds that the prior art does not invariably produce the patented compound. It may be the case that some courts are manipulating the canons of claim construction to avoid finding the accused infringer liable for de minimis infringement because there is no recognized or established de minimis infringement exception. Or perhaps an underlying reason why the courts are restricting the claim scope is the fear that afinding of infringement could lead to an injunction. In this light, the legislature should either act to establish a statutory framework of de minimis infringement, and thus excuse liability, or limit the remedy for such infringement to damages.<--

Mr. Miller discussed the case Schering v. Geneva, 339 F.3d 1373 (CAFC 2003), which resolved the issue of recognition.

--> One such subissue involves "recognition," the question of whether artisans skilled in the art must recognize the "missing" explicit claim limitationwithin the prior art reference. n47 Another subissue that will be considered involves the invariability, orcertainty, requirement. Invariability refers to the principle that the missing descriptive material is "necessarily present,"not merely probably or possibly present, in the prior art, and a number of cases and secondary sources suggest that thisis perhaps the most important principle in the law on inherency. <--

I had correctly predicted the outcome of the issue of "recognition" in an article in 1999.

from Endnote 11 of Lawrence B. Ebert, There's Always Something There to Remind You, Intellectual Property Today, May 2003:

Note In re Seaborg, 328 F.2d 996 (CCPA 1964). Applicant argued that a small amount of an unknown, unconcentrated isotope would have been undetectable, and the CCPA concurred. However, what result if a new analytical method were subsequently developed which made that small amount detectable? Contemplate text from L. B. Ebert, “Inherent difficulties,” Int. Prop. Today, Nov. 1999: To illustrate one issue in the interpretation of Continental Can, consider the discovery of buckyballs. In 1984, workers at Exxon disclosed the existence of C60, with the formula as determined by mass spectrometric measurement n6 and a way to make said C60. (J. Chem. Phys., 1984, 81, 3322). They did not disclose the correct structure of C60; Professors Smalley and Kroto proposed the structure of C60 to be that of a truncated icosahedron in 1985. This was not known to be correct until after the work of Huffman and Kratschmer in 1990. Now, assuming that the synthesis of Exxon always led to C60 with the icosahedral structure, would a patent claim to C60 in 1990 (with the truncated icosahedral structure) be inherently anticipated by the Exxon work in 1984, even though no one knew the structure in 1984, and in fact could not have proved the structure until 1990? Assuming that one of ordinary skill would recognize the inherent property, albeit at a later date, one might think there would be inherent anticipation. (Of course, a 1990 claim to merely C60 would be explicitly anticipated by the written description and enablement of the 1984 reference.)

The main body of the 2003 IPT article, in discussing the Apotex case, noted:

At the same time, however,it should be made clear that there is symmetry between the standards applied for infringement and invalidity. If these same minor amounts were found to exist in a product that existed before the patent, then the patent claim should be found invalid.11 As the Supreme Court said in Peters v.Active Manufacturing Co., 129 U.S. 530,537 (1889): “[t]hat which infringes, if later,would anticipate if earlier.” In terms of Chairman Greenspan’s policy concerns, we will allow the competitor to design around,but if the competitor comes so close that he makes some of the claimed product, whenearlier processes made none of the claimed product, then the competitor is deemed an infringer.

Further to the Nov. 1999 article, at the time of my writing in 1999, a couple of partners disputed both my prediction about "recognition" (which came true in the Schering case) and even argued that Continental Can was not good law (in 1999). Of course, Continental Can is, and has been, good law.


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