tag:blogger.com,1999:blog-1454051731189268002.post3288796661542731126..comments2024-03-27T11:29:23.559-03:00Comments on Sufficient Description: Claim Construction and ValidityUnknownnoreply@blogger.comBlogger4125tag:blogger.com,1999:blog-1454051731189268002.post-712337403403063322011-03-07T11:43:38.476-04:002011-03-07T11:43:38.476-04:00That’s a very interesting suggestion. I’d have to ...That’s a very interesting suggestion. I’d have to think a bit more about whether it explains the cases generally. It doesn’t help with respect to Kirin-Amgen, though, where it was undisputed that the patent’s technical contribution was the identification of the amino acid sequence of EPO and the majority of DNA sequence of the EPO gene, and it was also found as a fact at trial that “were it not for the disclosure, the contribution to the art, of the 605 patent, [the defendant] could not have achieved the expression of EPO, whether in mammalian cells or otherwise,” and that it would have been obvious to a person skilled in the art that the defendant’s method relied on the patentee’s technical contribution. What I find particularly galling about the UKHL decision in Kirin-Amgen is that there was a perfectly reasonable construction based on that text that would have encompassed the patentee’s technical contribution: see the trial decision [2001] EWHC (Pat) 518 at [213]. where Neuberger J acknowledged that the patentee’s proposed interpretation had “linguistic force. . . attraction and logic.”Normanhttps://www.blogger.com/profile/17573687140337856397noreply@blogger.comtag:blogger.com,1999:blog-1454051731189268002.post-38333748919635036692011-03-07T10:36:50.830-04:002011-03-07T10:36:50.830-04:00One possible way to reconcile the various threads ...One possible way to reconcile the various threads might be to distinguish (a) what the patentee thought was inventive (based on what they said in the description) and (b) what is actually inventive over the prior art in the court's opinion. Then one can say that the claim should be interpreted to cover (a) - no more, no less; but that (b) is irrelevant to claim construction. Just a thought.The Bright Sparkhttps://www.blogger.com/profile/16592887484444279014noreply@blogger.comtag:blogger.com,1999:blog-1454051731189268002.post-69049283528050767922011-03-07T10:25:13.190-04:002011-03-07T10:25:13.190-04:00Yes, I realize that comment was disapproved. My ar...Yes, I realize that comment was disapproved. My article that I mention in the post, “Free World and Whirlpool in Light of Kirin-Amgen” is essentially an extended argument that Lord Hoffmann’s decision in Kirin-Amgen was entirely wrong-headed on claim construction. I argue that it was the very antithesis of a purposive construction. On the particular point regarding the presumption of validity, Lord Hoffmann said “There is no presumption about the width of the claims. A patent may, for one reason or another, claim less than it teaches or enables.” That is quite true, but it does not follow that there is no presumption; a presumption can always be overcome. As Jacob LJ pointed out in response to Lord Hoffmann, “[t]rue it is that ‘a patent may, for one reason or another, claim less than it teaches or enables’ . . .but that is not a reason for interpreting the claim in the context of the patent in a way that no rational patentee would have intended.” Ranbaxy v. Warner-Lambert, <a href="http://www.bailii.org/uk/cases/EWCA/Civ/2006/876.html" rel="nofollow">[2006] EWCA Civ 876</a> at [19]. My view is that Jacob LJ had the better of that debate.Normanhttps://www.blogger.com/profile/17573687140337856397noreply@blogger.comtag:blogger.com,1999:blog-1454051731189268002.post-28863141072705404352011-03-07T10:02:09.249-04:002011-03-07T10:02:09.249-04:00Just FYI, the observation of Jacob LJ that you quo...Just FYI, the observation of Jacob LJ that you quote (your reference #4) was disapproved by the House of Lords in <i>Kirin Amgen</i> <a href="http://www.bailii.org/uk/cases/UKHL/2004/46.html" rel="nofollow">[2004] UKHL 46</a> at [33].<br /><br />On the other hand, English authority supports the idea that the patenteee is to be regarded intending to claim something which they regard as inventive - e.g. <i>Virgin Airways</i> <a href="http://www.bailii.org/ew/cases/EWCA/Civ/2009/1062.html" rel="nofollow">[2009] EWCA Civ 1062</a>.The Bright Sparkhttps://www.blogger.com/profile/16592887484444279014noreply@blogger.com