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Process Claims 10/12/2009 3:33:50 PM EST Hughey on Abbott Laboratories v. Sandoz, Inc. Associate, Merchant & Gould, P.C.
For years, there was a Federal Circuit split regarding product-by-process limitations. One panel had declared that the process is not a limitation for infringement. Another panel disagreed, asserting that process terms in product-by-process claims serve as limitations in determining infringement. In Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009), the court, en banc, resolved the split. In this Analysis, Rachel Hughey discusses Abbott Labs and analyzes product-by-process limitations. She writes:
I. Background
A product-by-process claim is one directed to a product, but with a statement in the claim of the process used to obtain the product. While the law of infringement of product-by-process claims had not been clear for years, a specific circuit split formed the early 1990s. In 1991, Judge Newman wrote the opinion in Scripps Clinic & Research Foundation v. Genentech, Inc. [927 F.2d 1565 (Fed. Cir. 1991)], and declared that "the correct reading of product-by-process claims is that they are not limited to product prepared by the process set forth in the claims," reasoning that claims must be construed the same way for validity and for infringement.
A year later Judge Rader authored the decision in Atlantic Thermoplastics Co. v. Faytex Corp. [970 F.2d 834 (Fed. Cir. 1992)], which held the opposite--namely that product-by-process claims are limited by the process. That panel asserted that Supreme Court case law required the process limitations to be met for infringement of product-by-process claims. The panel reasoned that the Scripps panel failed to consider this controlling Supreme Court precedent, and thus did not control.
. . . .
The Abbott case has settled the law that infringement of a product-by-process claim is limited to the process in the claim, even if the product is new and not otherwise definable. The court followed Supreme Court precedent that required all elements of a claim to be met for infringement, including the statement in Warner-Jenkinson [v. Hilton Davis Chem. Co., 520 U.S. 17 (U.S. 1997)] that "[e]ach element contained in a patent claim is deemed material to defining the scope of the patented invention.'" It remains to be seen if the court will extend this reasoning to other aspects of infringement, such as claim preambles, which are not considered a limitation unless they give "life and meaning" to the claims under current law.
(footnotes omitted)
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