Last Month at the Federal Circuit - January 2012


In this issue: Proving Prior Invention Does Not Require That the Prior Inventor Appreciated the Subject Matter Using the Same Words of the Claim; Plaintiff’s Choice of Forum and Defendant’s State of Incorporation Not Dispositive in Venue Transfer Analysis; In Dissent, Judge Newman Questions PTO Reexamination After Judicial Determination of Patent Validity; and TTAB’s Entry of Default Judgment Affirmed as Sanction for Failure to Comply with Discovery Orders.

In Teva Pharmaceutical Industries Ltd. v. AstraZeneca Pharmaceuticals LP, No. 11-1091 (Fed. Cir. Dec. 1, 2011), the Federal Circuit affirmed the district court’s grant of SJ of invalidity of certain claims of Teva Pharmaceutical Industries Ltd.’s (“Teva”) U.S. Patent No. RE39,502 (“the ’502 patent”) based on AstraZeneca Pharmaceuticals LP’s (“AstraZeneca”) prior invention under 35 U.S.C. § 102(g)(2). In this case, the only question before the Court was whether, as a matter of law, AstraZeneca had to appreciate that crospovidone stabilized its drug in order to prove prior invention under § 102(g)(2). The Federal Circuit held that the party asserting prior invention must prove that it appreciated what it had made, but the prior inventor did not need to know everything about how or why its invention worked and did not need to “conceive of its invention using the same words as the patentee would later use to claim it.” Slip op. at 11. Thus, because AstraZeneca appreciated (1) that the composition it asserted as its prior invention was stable and (2) what the components of the composition were, the Court rejected Teva’s argument that AstraZeneca had to appreciate crospovidone’s stabilizing effect. See this month’s edition of Last Month at the Federal Circuit for a full summary of this decision.

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