You Better Watch Out

There are approximately 638 issued patents that mention Santa Clas, more that a hundred or so that actually show him. His first appearance was in U.S. Patent No. 276,586 in 1883:

Since then, his appearance has changed over the years, as the following collection shows:

Santa Claus, whatever he looks like, is about to come to town a gain. Happy holidays!

Definition in Patent Incorporated by Reference, Results in Obviousness Determination

In Parkervision, Inc., v. Vidal, [2022-1548] (December 15, 2023) the Federal Circuit affirmed the PTAB’s determination that claim 3 of U.S. Patent No. 7,110,444 was unpatentable as obvious.

At issue on appeal was the construction of “storage element.” The Federal Circuit noted that in the ‘551 patent, incorporated by reference into the ‘444 patent, Parkervision acted as its own lexicographer to define the term “storage element.” The language expresses an intent to define the term “storage element.”  In particular the Federal Circuit said that the patentee’s use of the phrases “as used herein” and “refer to” conveys an intent for sentence 5 to be definitional.”  The language was found definitional because it did not refer to reference numerals, and referring to the document as a whole with the phrase “as used herein.”

The Federal Circuit found that the Board’s construction of “storage element”—“an element of a system that stores non-negligible amounts of energy from an input EM signal”— correctly tracks the lexicography provided in the specification.  Agreeing with the PTAB’s claim construction, the Federal Circuit affirmed their obviousness determination as well.

Filing an ANDA is not Infringement, Unless the Specified Use is Claimed in the Patent

In H. Lundbeck A/S v. Lupin Ltd., [2022-1194, 2022-1208, 2022-1246] (December 7, 2023), the Federal Circuit affirmed the judgment of non-infringement of U.S. Patent Nos.

9,278,096 and 9,125,910, and the determination that Lupin infringed claim 12 of U.S. Patent No. 9,101,626.

The Federal Circuit agreed with the district court that filing an ANDA is not infringement, unless the specified use is claimed in the patent.  The defendants solely seek approval to market the drug for the treatment of MDD pursuant to the methods of expiring patents—that is the “purpose” of the ANDA submissions. Thus, the patented uses are not those for which ANDA approval is sought. The Federal Circuit found that Plaintiffs have failed to establish that section 271(e)(2)(A) provides an independent basis of infringement.

The Federal Circuit also rejected the argument that the ANDA induced infringement, noting that the label in question is not a label that induces infringement of the ’096 patent. It was the label FDA required for the sale of the drug to treat MDD—a label that the patentee itself proposed for that purpose in connection with its NDA for treating MDD and that preexisted the issuance of the ’096 patent.  It cannot be, as plaintiffs suggest, that a patentee can bar the sale of a drug for a use covered only by patents that will have expired simply by securing a new patent for an additional, narrower use.

On its cross appeal, argued that the district court erred in construing “reacting” in the ’626 patent to mean “the changing of a reactant(s) to product(s)” and in finding infringement under that construction. The Federal Circuit disagreed.  Lupin contended that “reacting” meant “the specified chemicals are added to the reaction vessel at the beginning of the process as starting material,” and Lupin’s process does not use one of the compounds as a starting material.  The Federal Circuit said that it was true that the specification only refers to using the compound as starting materials, but nothing in the claims, specification, or file history requires Lupin’s narrower reading.

The Federal Circuit noted that the district court’s definition was consistent with the dictionary definition, that the prosecution did not support Lupin’s definition, nor did Lupin’s arguments about claim differentiation.  Based upon what the Federal Circuit found was the correct definition of reacting, the Federal Circuit affirmed the finding of infringement.