| Review and Analysis of Pfizer, Inc. v. Ranbaxy | | | | F.3d 1342, 1345 (Fed. Cir. 1999) ("[I]f the only |
| Laboratories Limited, F.3d 1284; 2006 | | | | claim construction that is consistent with the |
| U.S. App. LEXIS 19416; 79 USPQ2d 1583 (Fed. Cir. | | | | claim's language and the written description |
| August 2, 2006) | | | | renders the claim invalid, then . . . the claim is |
| In Pfizer, Inc. v. Ranbaxy Laboratories Limited, | | | | simply invalid."). Ranbaxy correctly argues that |
| F.3d 1284; 2006 U.S. App. LEXIS 19416; 79 | | | | claim 6 fails to "specify a further limitation of the |
| USPQ2d 1583 (Fed. Cir. August 2, 2006), the | | | | subject matter" of the claim to which it refers |
| CAFC held patent claim 6 invalid under the fourth | | | | because it is completely outside the scope of |
| paragraph of 35 USC 112 for failing to further limit | | | | claim 2. We must therefore reverse the district |
| the claim from which it depends. | | | | court with respect to this issue and hold claim 6 |
| Claim 1 reads as follows: "1. | | | | invalid for failure to comply with § 112, ¶ 4. |
| y-5-(1-methylethyl)-3-phenyl-4-[(phenyla | | | | The opinion also notes in footnote 3 that both |
| mino)-carbonyl]-1H-pyrrole-1-heptanoic acid n4 or | | | | parties stipulated that claim 6 was in fact a |
| iphenyl-1-[2-(tetrahydro-4-hydroxy-6-oxo | | | | dependent claim. However, the stipulation was not |
| -2H-pyran-2-yl)ethyl]-1H-pyrrole-3-carboxamide; n5 | | | | a factor in the court relied upon it in its legal |
| or pharmaceutically acceptable salts thereof." | | | | reasoning. |
| Claim 2 reads as follows: "2. A compound of claim | | | | What this means in practical terms (unless this |
| 1 which is | | | | holding is overruled, and barring unusual facts) is |
| ethylethyl)-3-phenyl-4-[(phenylamino)carb | | | | that any claim in the form: "A first 'thing' of the |
| onyl]-1H-pyrrole-1-heptanoic acid." | | | | second 'thing' of claim X" has a good chance of |
| Claim 6 reads as follows: "6. The hemicalcium salt | | | | being invalid if the first 'thing' is not a species of |
| of the compound of claim 2." | | | | the second 'thing.' In particular, claims like "2. A salt |
| The important points are that claim 2 is limited to | | | | of the acid of claim 1" are likely invalid. The 'may' |
| an acid compound, and that claim 6 attempts to | | | | caveat exists for two reasons. As the opinion |
| define the salt of the acid compound of claim 2 | | | | states, the parties stipulated that claim 6 was a |
| by refering to claim 2. The Court found claim 6 | | | | dependent claim. Otherwise, it might have been |
| invalid because it interpreted claim 6's reference | | | | construed as an incorporation claim. I find this |
| to claim 2 to require claim 6 to include all | | | | possibility unlikely in view of the Court's reasoning. |
| limitations of claim 2, and therefore to define an | | | | Second, a specification thoeretically could |
| acid. However, claim 6's recitation "hemicalcium | | | | expressly define "acid" to also include within its |
| salt" does not define (and in fact is inconsistent | | | | meaning "salt" since a patentee can be his own |
| with) an acid. | | | | lexicographer. I doubt many issued patents having |
| An excerpt of the opinion showing the Court's | | | | this type of claim contain such a definition. |
| legal reasoning follows: | | | | Clearly, a large number of issued patent claims |
| We recognize that the patentee was attempting | | | | are likely invalid in view of this decision. An obvious |
| to claim what might otherwise have been | | | | course of action for all patentees in view of this |
| patentable subject matter.[note 7 omitted] | | | | decision is to review their portfolio of patents, |
| Indeed, claim 6 could have been properly drafted | | | | licenses, and due diligence files, to see which U.S. |
| either as dependent from claim 1 or as an | | | | patents and applications have claims of this |
| independent claim - - i.e., "the hemicalcium salt of | | | | nature, and then determine suitable follow up |
| atorvastatin acid." But, we "should not rewrite | | | | actions. Such actions would include canceling |
| claims to preserve validity." Nazomi Commc'ns, | | | | licenses, reissuing patents, presenting new claims |
| Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1368 | | | | in continuation applications, and proceeding with |
| (Fed. Cir. 2005); see also Rhine v. Casio, Inc., 183 | | | | commercial activity otherwise precluded. |