Monday, November 17, 2014

CAFC affirms D. Del. in Antares v. Medac and explains "the original patent requirement" of 35 USC 251

The CAFC affirmed Judge Robinson in the Antares case.

Antares is a developer of automatic injection devices
used to self-administer pharmaceuticals. It is the assignee
of U.S. Patent No. 7,776,015 (“the ’015 patent”), which
issued on August 17, 2010. That patent, entitled
system for injecting medicant in which a needle punctures
the skin before forcefully expelling the medicant, thereby
minimizing some of the downsides of typical jet injectors
(in which the medicant itself ruptures the outer layers of
skin), while still maintaining some of the advantages of
typical jet injectors. During prosecution, the applicants
repeatedly distinguished their invention from the prior
art by focusing on the “jet injector” limitation present in
their claims but not the prior art. The originally issued
claims all contained the “jet injection” limitation.

The argument:

Antares argues that the district court incorrectly applied
the recapture rule and that, under the “overlooked
aspects” cases, the recapture rule is inapplicable. In this
respect, Antares relies on Mostafazadeh, 643 F.3d at
1360. Antares argues that, while the recapture rule
generally prohibits a patentee from “regain[ing] through
reissue the subject matter that he surrendered in an
effort to obtain allowance of the original claims,” the
recapture rule is entirely inapplicable if the reissue claims
recite “overlooked aspects” of the invention. Mostafazadeh,
643 F.3d at 1358 (quoting In re Clement, 131 F.3d
1464, 1468 (Fed. Cir. 1997)); see also In re Youman, 679
F.3d 1335, 1347 (Fed. Cir. 2012). Antares argues that
overlooked aspects are “patentably distinct (1) inventions;
(2) embodiments; or (3) species not originally claimed[,]
not mere incidental features of the originally-claimed
invention.” Mostafazadeh, 643 F.3d at 1360 (citation
omitted).1 Because we hold that the asserted claims of
the ’846 patent fail the original patent requirement of 35
U.S.C. § 251, we do not reach the question of whether the
recapture rule applies and, if it does, whether it was
violated here.

The CAFC went into some basics:

Typically, if an applicant files a patent application
disclosing and claiming one invention and later realizes
that the specification discloses a second or broader invention,
he may seek coverage of those additional claims
pursuant to 35 U.S.C. § 120, which allows for continuing
applications to claim the priority date of earlier applications.
One type of continuing application is a continuation
application. A continuation application is “a second
application for the same invention claimed in a prior
nonprovisional application and filed before the original
prior application becomes abandoned or patented.” MPEP
§ 201.07 (9th ed. Mar. 2014); see also 37 C.F.R. § 1.53(b).
A divisional application is another type of continuing
application and is intended for “distinct invention[s],
carved out of a pending application and disclosing and
claiming only subject matter disclosed in the earlier or
parent application.” MPEP § 201.06; see also 37 C.F.R.
§ 1.53(b). When an applicant seeks to add new claims
pursuant to a continuation or divisional application, the
statute explicitly states that the original specification
provides adequate support for the new claims if the
original specification satisfies the § 112(a) written description
requirement for the new claims. 35 U.S.C.
§ 120.2

Of the original patent requirement:

Supreme Court cases have recognized this requirement
for more than 150 years.4 See, e.g., Battin v. Taggert,
58 U.S. 74, 85 (1854) (noting that reissued patents
must be “for the same invention as the original patent”);
Klein v. Russell, 86 U.S. 433, 466 (1873) (same). (...)

Since the creation of this court in 1982, we have addressed
Industrial Chemicals and the original patent
requirement on four occasions: In re Hounsfield, 699 F.2d
1320 (Fed. Cir. 1983); In re Weiler, 790 F.2d 1576 (Fed.
Cir. 1986); In re Amos, 953 F.2d 613 (Fed. Cir. 1991); and
Hester Industries., Inc. v. Stein, Inc., 142 F.3d 1472 (Fed.
Cir. 1998). Significantly, none of those cases suggested
that the 1952 change in language worked a substantive
change in the “same invention” requirement or that the
standard of Industrial Chemicals has in any way been
altered by the legislative changes. (...)

The situation here is quite unlike Amos, in which we
held that the original patent requirement was satisfied.
In Amos, the patentee sought to broaden his claims on an
invention relating to the use of rollers to hold down workpieces
on a moving table. The specification expressly
disclosed that rollers, as they approached the end of the
table, could be “raised either mechanically by the roller
cams or electronically by the computer controlling the
router.” Amos, 953 F.2d at 614. The original claims only
covered the manual embodiment. On reissue, the applicant
sought to add the computer-controlled embodiment.
Id. The Board denied the reissue because there was no
objective intent to claim. Id. at 615. This court reversed
the Board because the exact embodiment claimed on
reissue was expressly disclosed in the specification.

Andrew Williams of PatentDocs criticized the decision.:

The problem in this case stems from the Court's reliance on a 1942 Supreme Court case, U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668 (1942). The strict adherence to the language in this case forced the Federal Circuit to contort reissue jurisprudence to such a degree that it appeared to demand a heightened disclosure requirement. This stems, in part, from the Court elevating a line from Industrial Chemicals that suggested that to satisfy the "same invention" requirement "it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification." Id. at 676. As such, the Federal Circuit was forced to conclude that the "original patent" requirement was somehow more exacting than the original requirements for patentability, necessitating the conclusion that "the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention." (emphasis added).

One notes that the issue presented by the parties involved the recapture rule,
and the CAFC stretched to reach the original patent requirement ("overlooked aspects").


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