Wednesday, June 22, 2011

Tyco loses appeal at CAFC. Text including: That argument is silly.

Tyco, represented by Henry Renk of Fitzpatrick, lost its appeal at the CAFC.

Judge Bryson began the opinion:

Tyco Healthcare Group LP and Mallinckrodt, Inc. (col-
lectively, “Tyco”) appeal from a summary judgment in-
validating the two claims of U.S. Patent No. 5,211,954
(“the ’954 patent”) for obviousness. We affirm.

Of ranges, the CAFC noted

Ordinarily, “where there is a range disclosed in the
prior art, and the claimed invention falls within that
range, there is a presumption of obviousness.” Iron Grip
Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed.
Cir. 2004); accord Lazare Kaplan Int’l, Inc. v. Photoscribe
Techs., Inc., 628 F.3d 1359, 1380-81 (Fed. Cir. 2010).
That presumption is rebuttable either by a showing that
the prior art taught away from the invention or by a
showing of new and unexpected results relative to the
prior art. Iron Grip Barbell, 392 F.3d at 1322.

Of ineffective testimony:

Those statements by Dr. Orr correctly describe the
contents of the BNF reference, but they do not undermine
the district court’s conclusions as to obviousness.
’954 claims do not discuss the intended use of the capsules
in a particular treatment regimen. The manufacture of a
7.5 mg temazepam capsule with the disclosed claim
limitations would infringe both claims of the ’954 patent,
irrespective of the efficacy of the product.

and within footnote 3:

That argument is silly. Not only is it contrary to the
ordinary understanding that a dash joining two numbers
signifies the end points of an inclusive range, but it also is
at odds with Dr. Orr’s own reference to “5-15 mg” as
constituting a “range.”


That argument is unavailing.
“The discovery of a new property or use of a previously
known composition, even when that property and use are
unobvious from the prior art, can not impart patentability
to the known composition.” In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) (noting that “a new use of a known
composition . . . may be patentable as a process”).


There are two problems with Tyco’s argument. First,
the Matejcek study did not identify whether hard or soft
capsules were used in its experiment. The prosecuting
attorney for the ’954 patent represented to the PTO that
Matejcek “clearly state[s]” that the capsules used were
soft capsules, but there is no support for that statement in
the record. After Mutual pointed out the lack of evidence
on that point in its brief, Tyco refrained from characteriz-
ing the Matejcek capsule as a soft capsule in its reply

Merely using the word "unexpected" in the specification
is not enough:

Tyco argues that secondary considerations support a
finding of non-obviousness of the ’954 claims. It contends
that the experimental results described in the ’954 patent
were unexpected. In support, Tyco cites the patent speci-
fication’s description of the inventor’s experimental re-
sults as “unexpected.” ’954 patent, col.2, ll.34-36.
Unsupported statements in the specification, however,
cannot support a finding of unexpected results.
In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).

Anderson's Black Rock was cited:

See Ryko Mfg. Co. v. Nu-Star, Inc., 950
F.2d 714, 719 (Fed. Cir. 1991); see also KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 413 (2007) (upholding district
court’s summary judgment of invalidity for obviousness
despite evidence of commercial success); Anderson’s-Black
Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 61


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