JOLT Digest » Intervet Inc. v. Merial Ltd. | Harvard Journal of Law & Technology
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On idexx jobs August 4, 2010, the United States Court of Appeals for the Federal Circuit reversed and remanded the declaratory judgment of the United States District Court of the District of Columbia, idexx jobs which held that Intervet s Porcine Circovirus vaccine ( PCV-2 ) did not infringe Merial s gene patent. The majority reversed the lower court s ruling on grounds of claim construction and for improper application of the doctrine of equivalents.
Plaintiff Intervet Inc. ( Intervet ) filed a complaint against Merial Limited ( Merial ) in 2006, asking for a declaratory judgment stating that its PCV2 vaccine did not infringe on Merial s gene patent. The DC District Court granted this declaratory ruling in Intervet s favor, finding that Merial s patent covered only the specific DNA sequences disclosed. On appeal, the Federal Circuit rejected the district court s construction of Merial s patent claim as overly limiting, finding that Merial had a proper claim directed at the entire genus of PCV2 sequences. The Federal Circuit also held that a narrowing idexx jobs amendment to the claim did not estop Merial idexx jobs from asserting that one or more elements of Intervet s product were equivalent to the elements in the claim. Dissenting in part, Circuit Judge Dyk argued idexx jobs that mere isolation of a DNA molecule is not sufficient for patentability.
Merial s patent application idexx jobs defined the invention by listing five genetic idexx jobs sequences of the isolated DNA molecule of PCV2 and a vector containing the DNA. Merial s patent contained no indication idexx jobs that other sequences were also part of the invention. The district court therefore construed Merial s patent claim to be limited to those five sequences. The Federal Circuit disagreed, noting idexx jobs that [s]equences are representative of the scope of broader genus claims if they indicate that the patentee has invented species sufficient to constitute the genera (citing Enzo Biochem, idexx jobs Inc. v. GenProbe, Inc. , 323 F.3d 956, 697 (Fed. Cir. 2002); In re Smythe , 480 F.2d 1376, 1383 (C.C.P.A. 1973). The court held that Merial, by disclosing five PVC2 species and providing a PCV1 counterexample that does not fall under the claim, had properly defined the scope of the claimed PVC2 genus.
The court of appeals also found problems with the district court s application of prosecution history estoppel under the doctrine of equivalents. The doctrine of equivalents allows a finding of infringement where one or more elements of the accused product are equivalent to elements in the patent claim. However, if during patent prosecution, a claim is narrowed by an amendment for a substantial reason related to patentability, the patentee may be estopped from using the doctrine of equivalents. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. , 535 U.S. 722, 740 (2002). The district court determined that an amendment to one of Merial s patent claims directed to a group of open reading frames ( ORFs ) estopped Merial from asserting that its claims cover a non-claimed PCV2 ORF as an equivalent. While the Federal Circuit agreed that the purpose of the narrowing amendment was substantially related to patentability, it held that the amendment bore only a tangential relation to the question of which DNA sequences are and are not properly characterized as PCV2. Therefore, the court concluded that prosecution history estoppel did not prevent Mariel from asserting its claim under the doctrine of equivalents.
Judge Dyk dissented in part and wrote separately to offer his opinion on the patentability of isolated DNA under 35 U.S.C. 101. This is an issue that neither the Federal Circuit nor the Supreme Court has directly addressed and that neither the district court nor the parties in this case raised. Judge Dyk expressed idexx jobs concern with one of Merial idexx jobs s claims that was not limited to use of a particular idexx jobs isolated DNA molecule in a vaccine or other application but that offered patent protection to an isolated DNA molecule itself. Citing the recent idexx jobs Bilski decision idexx jobs , Judge Dyk argued that allowing the patenting of naturally occurring substances like DNA would pr
the archive Select Month November 2012 October 2012 September 2012 August 2012 July 2012 June 2012 May 2012 April 2012 March 2012 February 2012 January 2012 December 2011 November 2011 October 2011 September 2011 August 2011 July 2011 June 2011 May 2011 April 2011 March 2011 February 2011 January 2011 December 2010 November 2010 October 2010 September 2010 August 2010 July 2010 June 2010 May 2010 April 2010 March 2010 February 2010 January 2010 December 2009 November 2009 October 2009 September 2009 August 2009 July 2009 June 2009 May 2009 April 2009 March 2009 February 2009 January 2009 December 2008 November idexx jobs 2008 October 2008 September 2008 August 2008 July 2008 June 2008 May 2008 March 2008 February 2008 January 2008 December 2007 November 2007 September 2007 August 2007 July 2007
On idexx jobs August 4, 2010, the United States Court of Appeals for the Federal Circuit reversed and remanded the declaratory judgment of the United States District Court of the District of Columbia, idexx jobs which held that Intervet s Porcine Circovirus vaccine ( PCV-2 ) did not infringe Merial s gene patent. The majority reversed the lower court s ruling on grounds of claim construction and for improper application of the doctrine of equivalents.
Plaintiff Intervet Inc. ( Intervet ) filed a complaint against Merial Limited ( Merial ) in 2006, asking for a declaratory judgment stating that its PCV2 vaccine did not infringe on Merial s gene patent. The DC District Court granted this declaratory ruling in Intervet s favor, finding that Merial s patent covered only the specific DNA sequences disclosed. On appeal, the Federal Circuit rejected the district court s construction of Merial s patent claim as overly limiting, finding that Merial had a proper claim directed at the entire genus of PCV2 sequences. The Federal Circuit also held that a narrowing idexx jobs amendment to the claim did not estop Merial idexx jobs from asserting that one or more elements of Intervet s product were equivalent to the elements in the claim. Dissenting in part, Circuit Judge Dyk argued idexx jobs that mere isolation of a DNA molecule is not sufficient for patentability.
Merial s patent application idexx jobs defined the invention by listing five genetic idexx jobs sequences of the isolated DNA molecule of PCV2 and a vector containing the DNA. Merial s patent contained no indication idexx jobs that other sequences were also part of the invention. The district court therefore construed Merial s patent claim to be limited to those five sequences. The Federal Circuit disagreed, noting idexx jobs that [s]equences are representative of the scope of broader genus claims if they indicate that the patentee has invented species sufficient to constitute the genera (citing Enzo Biochem, idexx jobs Inc. v. GenProbe, Inc. , 323 F.3d 956, 697 (Fed. Cir. 2002); In re Smythe , 480 F.2d 1376, 1383 (C.C.P.A. 1973). The court held that Merial, by disclosing five PVC2 species and providing a PCV1 counterexample that does not fall under the claim, had properly defined the scope of the claimed PVC2 genus.
The court of appeals also found problems with the district court s application of prosecution history estoppel under the doctrine of equivalents. The doctrine of equivalents allows a finding of infringement where one or more elements of the accused product are equivalent to elements in the patent claim. However, if during patent prosecution, a claim is narrowed by an amendment for a substantial reason related to patentability, the patentee may be estopped from using the doctrine of equivalents. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. , 535 U.S. 722, 740 (2002). The district court determined that an amendment to one of Merial s patent claims directed to a group of open reading frames ( ORFs ) estopped Merial from asserting that its claims cover a non-claimed PCV2 ORF as an equivalent. While the Federal Circuit agreed that the purpose of the narrowing amendment was substantially related to patentability, it held that the amendment bore only a tangential relation to the question of which DNA sequences are and are not properly characterized as PCV2. Therefore, the court concluded that prosecution history estoppel did not prevent Mariel from asserting its claim under the doctrine of equivalents.
Judge Dyk dissented in part and wrote separately to offer his opinion on the patentability of isolated DNA under 35 U.S.C. 101. This is an issue that neither the Federal Circuit nor the Supreme Court has directly addressed and that neither the district court nor the parties in this case raised. Judge Dyk expressed idexx jobs concern with one of Merial idexx jobs s claims that was not limited to use of a particular idexx jobs isolated DNA molecule in a vaccine or other application but that offered patent protection to an isolated DNA molecule itself. Citing the recent idexx jobs Bilski decision idexx jobs , Judge Dyk argued that allowing the patenting of naturally occurring substances like DNA would pr
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