Biotech Values

[zipjet]

MNTA

Plaintiffs are directed to submit, on or before 12:00 noon Tuesday, October 25, 2011, a memorandum of law, not to exceed five pages, addressing the purported distinction between the patent terms "separation method" and "determining" discussed by defendants at oral argument and in their sur-reply memorandum (Docket No. 79). (Patch, Christine) (Entered: 10/21/2011)

The order certainly gives us the focus of the judge. He is looking at the "separation method" and "determining" as used in the patent claims, sur-reply and oral arguments.

This may be the issue on which the PI will rise or fall. If the judge had accepted the safe-harbor argument, he would not need to reach this issue. So I don't think he is going there.

I would be interested in any articulation of the significance of the judges focus as applied to the claims and facts we have.

I am conflicted about whether a patent that makes claims using general terms like "separation method" (without specifying enablement of each alternative method) should suffice to stake out the field.

The argument for sustaining the patent would be that once the puzzle has been solved and enabled, the disclosure would allow others to map an alternative separation method to the same result - something they could not have done without the enablement of the patent. Since the quid pro quo for patenting is exclusivity, if the disclosure allowed the patent to be circumvented (reverse engineered) it would promote the trade secret approach and be adverse to the policy behind patenting.

The argument against the patent is that each specific claim must be enabled and that general claims if allowed without specific enablement would form too broad a patent and block progress.

Tuesday we should get our next installment on this.

ij