Saturday, March 24, 2007

Liebel-Flarscheim case is a further indication of Kintisch's error

Further to the first Liebel-Flarscheim case at 358 F.3d 898, the CAFC invalidated certain patents on the basis of lack of enablement. One notes that the text includes a line: "Because we are resolving this issue on the enablement ground, we do not need to consider the written description holding of invalidity." The CAFC then adds the text "beware of what one asks for." Later on, the CAFC mentions "Pyrrhic victory."

It might be that written description was a clearer argument, but perhaps the CAFC was sending a message about enablement. One wonders about the viability of Engle v. Lockformer, 946 F.2d 1528.

This case is a clear negation of what was written by Eli Kintisch in the journal Science on July 28, 2006. What Kintisch wrote in Science was wrong in 2006 and it's still wrong in 2007, even though Science never corrected the story. See also 88 JPTOS 743-744:

The article in Science might leave a reader unfamiliar with patent law with the impression that there is a "loop-hole" in U.S. patent law which allows a patent applicant to add new detail to a pending application through the means of a continuation application which claims priority of invention to the initially-filed parent case. Separately, the article in Science leaves the reader with the idea that such continuation applications made up nearly one third of all patent application filings in the last year [FY 2005]. Neither inference from the article in Science is correct. [The '669 and '261 patents at issue in Liebel were continuations; arguably, the patentee changed the patent claims to entrap a competitor's product. The outcome of the case is the opposite to what the Kintisch article indicates happens, just as Kintisch got the reasoning of Chiron Corp. v. Genentech, 363 F.3d 1247, 70 USPQ2d 1321 (CAFC 2004) wrong. Shame on the journal Science!]

There was also an issue in the Liebel of the use of prior art that was previously before the examiner, with the CAFC citing to Glaxo, 376 F.3d 1339. [One recalls also "In re '639" litigation over nabumetone, and the reference in the Indian Journal of Chemistry.]


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