The new patent system: a comment >>> The new system puts a premium on inventors with the wits—or deep pockets—to dash to the patent office as soon as they discover something useful and non-obvious.
Many big companies say that change will help forestall drawn-out disputes. "You'll end up with a patent system that's more predictable and far more certain," said Bob Armitage, general counsel of drug maker Eli Lilly & Co.<<<
I do not believe that for a minute. That change will do little, if anything, to make the system more predictable or certain.
>>>The basis for the District Court's decision was that the "utility [of the claimed method] was not established because experimental data showing the results of treatment of ADHD were not included in the specification." The question addressed by the Federal Circuit was the extent of disclosure required to satisfy this requirement of the statute. Lilly contended that disclosing the use of atomoxetine to treat ADHD was enough, while defendants contended (and the District Court agreed) that the claimed utility must be established by experimental evidence in the application as filed.
The Federal Circuit reversed, based on its determination that the District Court's finding that experimental data was required to be in the application as filed was error. Provided priority between inventors is not involved, the Court's opinion said that applicants are able to submit data "either before or after the patent application was filed," where after-filed evidence "can be used to substantiate any doubts as to the asserted utility since this pertains to the accuracy of a statement already in the specification." The Court's opinion reversing the District Court's finding of invalidity was based on the requirement that an assertion of utility must be accepted as sufficient to satisfy the utility requirement unless there is "some reason" for the skilled worker to question the "objective truth" of the asserted utility, <<<
I suspect there are countervailing experts available that are capable of putting many facts in dispute.The above is an example.
Even more recently, Star Scientific[CIGX, a/k/a David] had to overcome Reynold's[RAI a/k/a Goliath] assertion, agreed to by the jury and J. Garbis, that Star's early filed provisional application was insufficient for description, enablement and best mode of carrying out the claimed invention. If memory serves, that dispute had been ongoing for ~10 years between the parties[even counsel for RAI's trial lawyers had once opined that the provisional application disclosure was sufficient to support the claims] The Fed. Cir. reversed, at long last:
>>>Most of you on this board are uninformed investors[read speculators]
Here is CIGX 1:30 pm PR that challenges what most of you have mindlessly posted. I think Bungler and I have most of it correct as to what may come next:
>>>in Patent Infringement Lawsuit Against RJ Reynolds 08/26 01:30 PM
GLEN ALLEN, Va., Aug. 26, 2011 /PRNewswire/ -- Star Scientific, Inc. (CIGX:$1.56,$-1.44,-48.00%) issued the following statement regarding the decision issued today by the Federal Circuit Court of Appeals on the company's appeal of the jury verdict in the trial of Star's patent infringement lawsuit against RJ Reynolds Tobacco Company:
"We are gratified that the Federal Circuit Court of Appeals has affirmed the validity of the patents at issue in our prosecution of patent infringement against RJ Reynolds. The Court specifically rejected each of the four invalidity defenses raised by RJR, and the panel also reversed the district court's 2007 summary judgment ruling on priority date: the panel affirmed that the patents' claims deserve the September, 1998 priority date as originally claimed. We nonetheless are disappointed that the Federal Circuit did not reverse the jury trial verdict of noninfringement[for acts occurring prior to filing of 1st complaint long ago]. "However, today's decision fully reestablishes and reinforces the company's rights to assert its patents against all prior and future infringers. In particular, we anticipate that our litigation against RJR for curing seasons after the two years addressed in this case now can move forward. That litigation had been stayed pending the outcome of the appeal."
Paul L. Perito, the company's chairman and president, stated, "Now that both the Federal Circuit Court of Appeals and the Patent and Trademark Office have affirmed the validity our patents' claims and 1998 priority date, we intend to vigorously protect our intellectual property, which we consider to be among our corporate crown jewels. At the same time, we currently are assessing options for further appellate review."<<<
Another comes to mind, Chiron v. Genentech, decided in 2004:
>>>After a jury trial, the United States District Court for the Eastern District of California entered judgment in favor of Genentech that all claims of U.S. Patent No. 6,054,561 are invalid under 35 U.S.C. § 102 because none of the asserted claims is entitled to priority to a series of applications 1250*1250 filed in 1984, 1985, and 1986. Chiron Corp. v. Genentech, Inc., No. Civ. S-00-1252 WBS GGH (Sept. 9 & Oct. 23, 2002). Because Chiron did not adequately disclose or support the subject matter of its '561 patent in its 1984, 1985, or 1986 applications, this court affirms the district court's denial of a motion for judgment as a matter of law (JMOL) and motion for a new trial.<<<
A worthy battle indeed---Chiron was trying to encompass within its claims DNA's Herceptin and DNA/BIIB's Rituxin, among others. Because it could not rely on the benefit of its earlier filed priority applications disclosing only one or more murine antibodies, the much later filed 1995 application now disclosing chimeric, and part or fully human antibodies, for the 1st time could not escape intervening prior art.
Somehow, these protracted battles will continue, and ultimately wind up in the judiciary, absent settlements or buy-outs, or licenses with royalties
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