|
Recent chemical patent and trademark
decisions
Claim terminology (what a difference a fluoro made)
United
States Court of Appeals for the Federal Circuit
2005-1542, DOW
AGROSCIENCES LLC, v. CROMPTON CORPORATION and UNIROYAL CHEMICAL COMPANY,
INC., decided May 5, 2006
Mini-abstract: The phrase
"if R2 is a
substituted phenyl group, the phenyl group contains at least one
substituent chosen from the group consisting of . . alkoxy. . ." is not
open to unlisted phenyl substituents nor substituted-alkoxy phenyl
substituents.
Dow’s accused hexaflumuron and noviflumuron products not
infringing. more
The Federal
Circuit affirmed the grant of summary judgment in favor of Dow
AgroSciences LLC (Dow) against Crompton Corp. (at 381 F. Supp. 2d 826
(S.D. Ind. 2005)), agreeing that Dow's products do not infringe any of the
claims of U.S. Patent Nos. 4,607,044, 4,833,151 and 5,142,064. These
patents claim compounds derived from urea or thiourea for insecticides,
which may include a (R2 position) phenyl substituted with
alkoxy.
The accused Dow
products, hexaflumuron and noviflumuron, both contain (R2
position) phenyl groups substituted with fluoro-alkoxy.
Crompton argued that (1)
the phrase "if R2
is a substituted phenyl group, the phenyl group contains at least
one substituent chosen from the group consisting of . . alkoxy. . ."
requires one, but not all, of the substituents on the phenyl group be from
the list, and (2) the term "alkoxy" refers to both substituted and
unsubstituted alkoxy groups.
The Federal Circuit agreed
with the district court – (1) all phenyl substituents must be among those
listed, and (2) the listed alkoxy cannot be a substituted alkoxy. Claim
construction here rested at least partly on the relentlessly recitations
throughout regarding which functional groups can be substituted, and thus
those groups not explicitly indicated as being capable of substitution
(such as the alkoxy in question) cannot be substituted.
Comment: Believe argument
(1) could have won.
FM4910
for flame retardant plastic refused registration
Westlake Plastics Company,
SN 76/310,516, decided March 6, 2006, TTAB (citable precedent)
A term is merely
descriptive within the meaning of Section 2(e)(1) if it immediately
conveys knowledge of a significant quality, characteristic, function,
feature or purpose of the goods with which it is used, or intended to be
used.
Westlake’s FM4910
trademark for flame retardant plastic materials for the semiconductor
industry immediately describes a key characteristic or feature of those
plastic materials, namely that the materials meet the prescribed standard
of fire safety of FM Global’s FM4910 fire testing protocol tied to the
semiconductor industry's demand for less flammable plastics.
Comment: Surprising
Westlake even tried.
Failure to disclose comparative-data dosages (Data and
dosages might yet bury Aventis patents)
United
States Court of Appeals for the Federal Circuit
AVENTIS PHARMA
S.A. and AVENTIS PHARMACEUTICALS INC. v. AMPHASTAR PHARMACEUTICALS, INC.
and TEVA PHARMACEUTICALS USA, INC. Decided: April 10, 2006
Mini-abstract:
Pushing comparative data to the patent examiner without disclosing the use
of different dosages might render Aventis patents unenforceable.
Additional proceeding required.
The Federal
Circuit reversed and remanded the holding that inequitable conduct
rendered United States Patent No. 5,389,618 and Reissue ‘743 unenforceable
(390 F.
Supp. 2d 936 (C.D. Cal. 2005)).
The patents disclose and
claim mixtures of low molecular weight herapin used to prevent blood
clots. During prosecution of the application, Aventis compared the
half-life of a covered product at a 40 mg dose to the half-life of a prior
art product at a 60 mg dose, in the application, in several office action
responses, and in two declarations by a scientist to show an unexpected
and significantly better half-life, without expressly disclosing the
dosages. A 60/60 comparison was much closer than the 40/60 one.
Applicants for patents
have a duty to prosecute patents in the PTO with candor and good faith,
including a duty to disclose information known to the applicants to be
material to patentability.
Although the half-life
comparisons were found highly material to patentability, the Federal
Circuit held that the district court erred in finding intent to deceive
on summary judgment. Aventis argued: 1) it reflects the preferred
dosage level for therapeutic reasons; 2) the 60 mg dosage level was not
preferred because it caused bleeding in some patients; and 3) the 40 mg
dosage level was more reliable because it had been confirmed in a separate
study. If the mixed-dosage comparison was reasonable (an undetermined
issue), the failure to disclose dosages may have been inadvertent.
Therefore genuine issues remain regarding Aventis’s intent to deceive the
PTO requiring further proceedings.
Applied
Medical’s IMMUNO-RX denied registration on IMMUNEX mark
Opposition 91153080,
decided March 6, 2006, TTAB
Immunex’s pharmaceuticals
for treating autoimmune diseases, healing wounds and cancer, and Applied
Medical’s vaccines for stimulating the immune systems, are clearly related
products, and Applied Medical’s IMMUNO-RX is far too close to IMMUNEX.
|