A chart summarizing the more interesting of these cases is set forth below. The District Court granted summary judgment based up a claim construction of the term “essentially free.” The Court ruled that, based upon the prosecution history, “essentially free” meant “less than 0.25%.” The defendant’s ANDA called for not more than 0.6%, or in other words, from 0.0% to 0.6%.
The district court construed the term “alkaline salt” and “pharmaceutically acceptable salt” to be limited to the disclosed salts. Based upon a certification from the Defendant that it would not manufacture below 0.3%, the District Court granted summary judgment of non-infringement.
The Court reversed as to the other claims, concluding they would have been obvious to one of skill in the art. The case turned on whether one of skill would have been motivated to combine the teachings of the prior art to derive the claimed subject matter.
Because the Federal Circuit believed the prior art itself provided such motivation, the asserted claims were found to be obvious.
In 1995 the indexing was not so strong, but the appellate panel here affirmed that the postings clearly fall within the scope of printed publications.
The question on appeal is whether that posting counts as prior art under 35 U. Today, Use Net materials are indexed by various search engines and would clearly be considered prior art.
Suffolk’s patent application was filed back in 1996, but it turns out that the invention was described in a 1995 Use Net newsgroup post posted by a college student. If a reference is sufficiently disseminated at time of original publication then the ability to later locate the reference is irrelevant.
Under the statute, a patent is invalid if “(a) the invention was … before the invention thereof by the applicant for a patent.” Courts have repeatedly found that online content fits within the definition of printed publication. Public accessibility looks to the ability of persons who would be interested or skilled in the subject matter to locate the reference using only reasonable diligence.
The Federal Circuit held that the patents, which taught use of active ingredient at 0.3% concentration, were invalid as obvious in light of prior art that disclosed preferred range of 0.01%–1% for that ingredient, with same inactive ingredients.