Tuesday, August 23, 2011

The value of a patent beyond its expiration date

35 USC 291 states:

The owner of an interfering patent may have relief against the owner of another by civil action, and the court may adjudge the question of the validity of any of the interfering patents, in whole or in part. The provisions of the second paragraph of section 146 of this title shall apply to actions brought under this section.

Genetics Institute v. Novartis addressed the question of whether or not 291 applies to an expired patent.

The issue:

On May 16, 2008, Genetics sued Novartis in the United States District Court for the District of Delaware to determine priority of invention under 35 U.S.C. § 291. Genetics alleged that an interference in fact existed between the following claims: (1) claim 1 of the ’112 patent and claim 68 of the ’620 patent; (2) claim 5 of the ’112 patent and claim 74 of the ’620 patent; (3) claim 9 of the ’112 patent and claim 83 of the ’620 patent; and (4) claims 9 and 10 of the ’112 patent and claim 1 of the ’447 patent. Genetics asserted that all three patents are directed to the same subject matter, viz., truncated Factor VIII proteins lacking all or part of the B domain while retaining procoagulant activity.
Novartis moved to dismiss, arguing that the court lacked subject matter jurisdiction because the extension of the ’112 patent under 35 U.S.C. § 156 applied to fewer than all of that patent’s claims. Novartis further argued that there was no interference in fact between the asserted claims because the Novartis patents—unlike the ’112 patent—are directed to truncated Factor VIII pro- teins that preserve the functional a3 acidic region.

Of note:

Much to the contrary, “a patent does have value beyond its expiration date.” In re Morgan, 990 F.2d 1230, 1232 (Fed. Cir. 1992). For example, an expired patent may form the basis of an action for past damages subject to the six-year limitation under 35 U.S.C. § 286. See, e.g., id. (recognizing that an action for patent infringement may be filed up to six years after the patent’s expiration). There is no comparable statute providing any such rights in a disclaimed claim.
Furthermore, the expiration of the ’112 patent does not deprive this § 291 action of meaning. In Kimberly- Clark Corp. v. Procter & Gamble Distributing Co., 973 F.2d 911, 914 (Fed. Cir. 1992), in determining that juris-
diction in a § 291 action existed following the parties’ settlement of infringement liability issues, we noted in support of our holding that “a declaration of priority and the subsequent elimination of an invalid patent that claims the same subject matter as claimed in one’s patent are ‘relief’ under [§ 291].” Similar reasoning applies here. Genetics points out that the outcome of this § 291 action “will have real-world consequences,” because Genetics’ corporate parent, Wyeth, has been sued for allegedly infringing the Novartis patents in a related case in the United States District Court for the Eastern District of Texas. Pl.-Appellant’s Reply Br. at 10; see also Compl. at 1, Novartis Vaccines & Diagnostics, Inc. v. Wyeth, No. 2:08-cv-067 (E.D. Tex. Feb. 15, 2008), ECF No. 1. A determination that the ’112 patent interferes with and has priority over the Novartis patents would directly affect the outcome of that infringement suit.

The outcome:

In particular, we conclude that the expiration of the ’112 patent following the district court’s entry of final judgment did not divest our court of appellate jurisdiction; that the patent term extension of the ’112 patent applied to all of the allegedly interfering claims; and that there is no interference in fact between (1) claim 1 of the ’112 patent and claim 68 of the ’620 patent, (2) claim 5 of the ’112 patent and claim 74 of the ’620 patent, (3) claim 9 of the ’112 patent and claim 83 of the ’620 patent, and (4) claims 9 and 10 of the ’112 patent and claim 1 of the ’447 patent.


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