{"id":1819,"date":"2017-11-09T22:34:40","date_gmt":"2017-11-10T03:34:40","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1819"},"modified":"2017-11-24T23:44:55","modified_gmt":"2017-11-25T04:44:55","slug":"amendment-of-claims-in-parent-application-do-not-apply-to-continuation-claims-that-do-not-have-the-amended-language","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1819","title":{"rendered":"Amendment of Claims in Parent Application Do Not Apply to Continuation Claims that do not have the Amended Language"},"content":{"rendered":"

In Sanofi v Watson Laboratories, Inc.<\/a>, [2016-2722, 2016-2726](November 9, 2017), the Federal Circuit affirmed the district court’s\u00a0final judgment rejecting the obviousness\u00a0challenge to claims 1\u20136, 8\u201313, and 16 of the U.S. Patent No. 8,410,167; finding inducement of infringement, by both
\ndefendants, of all of those claims except claim 5; and\u00a0finding infringement by both defendants of claims 1\u20133, 5-9, and 12\u201315 of U.S. Patent No. 8,318,800, and by Watson of claims\u00a010 and 11 as well.<\/p>\n

On appeal, Watson and Sandoz challenge the district court\u2019s inducement
\nfinding as to the \u2019167 patent, the district court\u2019s\u00a0rejection of their obviousness challenge to that patent,\u00a0and the district court\u2019s rejection of their prosecution disclaimer\u00a0argument for limiting the scope of the \u2019800
\npatent claims.<\/p>\n

On the inducement issues, the Federal Circuit said that it\u00a0reviews the district court\u2019s finding of inducement\u00a0based on encouragement and inferred intent for clear\u00a0error, which the Federal Circuit found was absent.\u00a0 The Federal Circuit noted that\u00a0the label\u00a0directed medical providers to information identifying the\u00a0desired benefit for only patients with the patent-claimed\u00a0risk factors.\u00a0 The Federal Circuit rejected Watson and Sandoz argument that\u00a0substantial noninfringing uses not forbidden by the
\nproposed labels prevented a finding of intent to encourage\u00a0an infringing use.\u00a0 The Federal Circuit found\u00a0no legal or logical basis for\u00a0the suggested limitation on inducement.<\/p>\n

On the obviousness issue,\u00a0Watson and Sandoz only challenged the district court\u2019s finding of no expectation of success.\u00a0 The Federal Circuit said that although the evidence might\u00a0well have supported the opposite finding, it could not conclude that the district court clearly erred in its finding.<\/p>\n

On the infringement issue, the Federal Circuit rejected the argument that Watson and Sandoz\u00a0\u00a0that the district court erred by failing to limit
\nthe claims of the \u2019800 patent to exclude polysorbate surfactants.\u00a0 While\u00a0while prosecuting\u00a0the parent application, which issued as U.S. Patent No.\u00a07,323,493, Sanofi amended the sole independent claims
\n(hence all claims)f so as expressly to exclude pharmaceutical
\ncompositions with a \u201cpolysorbate surfactant.\u201d\u00a0 Based on that amendment,
\nWatson and Sandoz contend that Sanofi made a \u201cprosecution
\ndisclaimer\u201d that also limits the scope of the claims of\u00a0the \u2019800 patent, despite the absence of any limiting language\u00a0in the \u2019800 patent\u2019s claims.<\/p>\n

The Federal Circuit said that a\u00a0prosecution disclaimer occurs when a patentee, either\u00a0through argument or amendment, surrenders claim
\nscope during the course of prosecution.\u00a0 But when the purported
\ndisclaimers are directed to specific claim terms that\u00a0have been omitted or materially altered in subsequent\u00a0applications (rather than to the invention itself), those\u00a0disclaimers do not apply.\u00a0 The general ruling being that\u00a0a prosecution disclaimer will only apply to a\u00a0subsequent patent if that patent contains the same claim\u00a0limitation as its predecessor.<\/p>\n

The Federal Circuit observed that in prosecuting the application
\nthat issued as the \u2019493 patent, was to write an\u00a0express limitation into the claims: \u201cprovided that the\u00a0pharmaceutical composition does not contain a polysorbate\u00a0surfactant.\u201d This\u00a0language does not appear in the \u2019800 patent claims at\u00a0issue, and Sanofi did not argue\u00a0during prosecution that the unamended claim language of\u00a0the \u2019493 patent, or the disclosed invention generally,\u00a0excluded polysorbate surfactants.\u00a0 The Federal Circuit said that the prosecution followed a familiar pattern:<\/p>\n

an applicant adopts an explicit claim-narrowing\u00a0limitation to achieve immediate issuance of a patent\u00a0containing the narrowed claims and postpones to the\u00a0prosecution of a continuation application further arguments
\nabout claims that lack the narrowing limitation.<\/p><\/blockquote>\n

The Federal Circuit said that without more than exists here, that process does not\u00a0imply a disclaimer as to claims, when later issued in the\u00a0continuation, that lack the first patent\u2019s express narrowing
\nlimitation.\u00a0 The Federal Circuit\u00a0affirmed the district court\u2019s ruling that the
\nscope of the claims of the \u2019800 patent should not be limited\u00a0so as to exclude polysorbate surfactants.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Sanofi v Watson Laboratories, Inc., [2016-2722, 2016-2726](November 9, 2017), the Federal Circuit affirmed the district court’s\u00a0final judgment rejecting the obviousness\u00a0challenge to claims 1\u20136, 8\u201313, and 16 of the U.S. Patent No. 8,410,167; finding inducement of infringement, by both defendants, … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[69,27,16,12,70],"tags":[],"class_list":["post-1819","post","type-post","status-publish","format-standard","hentry","category-disclaimer","category-inducement","category-infringement","category-obviousness","category-prosecution-history-estoppel"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1819","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1819"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1819\/revisions"}],"predecessor-version":[{"id":1821,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1819\/revisions\/1821"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1819"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1819"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1819"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}