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Product-by-process claims defined in earlier patent to same productFebruary 27, 2006

Product-by-process claims defined in earlier patent to same productIn a recent decision, a divided panel of the Federal Circuit Court of Appeals clarified its position regarding the patentability of product-by-process claims. These types of claims permit an inventor to claim a product that is otherwise unable to be explained by describing it in terms of its method of production. In the past, the court had taken divergent positions in two cases, Scripps Clinic & Research Foundation v. Genentech and Atlantic Thermoplastics Co. v. Faytex Corp.In the 1991 Scripps case, the court held that the ‘process’ portion of product-by-process claims were not limitations on the claim, and therefore if a third party produced the product, even if by a different process, they would infringe. One year later, in Atlantic Thermoplastics, the court held that the ‘process’ portion did limit the claims, stating that if a third party produced the product by a different process, they would not be an infringer.In the recent case of SmithKline Beecham Corp. v. Apotex Corp., the court offered some clarity in this area, but did not clear up the apparent conflict in its earlier decisions in Scripps and Atlantic Thermoplastics. In this case, the court held that a prior art reference disclosing the same product claimed in a product-by-process claim anticipates the product-by-process claim. The court did not reach the issue of whether the process elements of these claims are limitations, as the earlier disclosure of the product would anticipate such a claim whether or not the process steps are limiting.Judge Newman dissented from the decision. In her dissent, she noted that there are several different instances where an inventor may wish to use a product-by-process claim. The most common instances are where the product is defined by the way it is produced, where the claim to the product are limited by the manner in which it is produced, and where the process limitations are ‘structural’ in nature, such as in molded plastic. Judge Newman argues that depending on the type of product-by-process claim implicated, the infringement and validity analysis should differ. Further, she asserts that failure to interpret these claims as limited by their process steps goes against the court’s recent en banc ruling in Phillips v. AWH Corp. Based on the differing position of the members of the panel, it seems that a petition for rehearing en banc will likely be filed. If the petition is granted, the scope of product-by-process claims may finally be clarified.To read the complete decision, log on to

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