CAFC Issues One of the First Decisions for a Utility Patent in an Inter Partes Reexamination Proceeding
Chemi S.p.A. v. Kappos and Fidia Farmaceutici S.p.A.
Falls Church, VA & San Diego, CA – June 9, 2011 – Birch, Stewart, Kolasch & Birch, LLP (BSKB) announced today that the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the United States Patent and Trademark Office (USPTO) in
. Chemi v. Kappos and Fidia, Appeal No. 2010-1514, June 8, 2011. This decision should give chemical and pharmaceutical companies some level of confidence that inter partes reexamination can be effectively used to challenge patents.
The per curiam decision issued without an opinion under Federal Circuit Rule 36. However, the decision is still significant as being one of the first two decisions issued by the CAFC for a utility patent in an inter partes reexamination proceeding. Though inter partes reexamination has been an option since 2001, the CAFC issued the first two decisions in an inter partes reexamination proceeding for utility patents on June 8, 2011.
The Request for the inter partes reexamination was prepared and filed by BSKB on behalf of Fidia Farmaceutici Società per Azioni (S.p.A.) (Fidia). The USPTO granted Fidia’s request for reexamination of U.S. Patent No. 6,645,742 owned by Chemi S.p.A. (Chemi). The ‘742 patent is directed to chemical process for purifying a biological/chemical compound. During the inter partes proceeding, the third party Requester (Fidia) argued, and the USPTO agreed, that all of the ‘742 claims were unpatentable in view of certain prior art. The patent owner appealed the Examiner’s final rejections to the Board. The patent owner argued that the appealed claims should be construed to include the features of a particular embodiment(s) as described in the ‘742 specification. The third party Requester argued that based on a plain reading of the ‘742 claims, limitations described from the specification cannot be properly imported into the claims. The Board decided in favor of the third party Requester and affirmed the Examiner’s claim construction and rejections. The CAFC affirmed.
MaryAnne Armstrong, Ph.D., a partner at BSKB, was lead counsel for Fidia. Eugene T. Perez, a partner at BSKB, argued on Fidia’s behalf before the CAFC. Also on the reexamination was Raymond C. Stewart, Senior Counsel. The CAFC substantially adopted the arguments and reasoning presented on behalf of Appellee, Fidia, as well as the other Appellee, Director Kappos, in affirming the Board’s decision.
This case has important implications for chemical and pharmaceutical companies. Proper claim construction is a major issue in ex parte prosecution and inter partes reexamination proceedings, because the claims are to be given the broadest “reasonable” interpretation, while at the same time being construed in view of the specification, but being careful to not import limitations into the claims.
The decision Chemi v. Kappos and Fidia raises technical and legal issues that arise during an inter partes reexamination proceeding, and are highly complex. BSKB is one of a handful of firms in the U.S. equipped to handle such a case, due to its specialized legal expertise as well as a practice group specifically dedicated to patent reexaminations and reissues.
About BSKB
Founded in 1976, BSKB is an internationally recognized intellectual property law firm with offices in Falls Church, VA and San Diego, CA. The firm has a full service intellectual property practice including patent interference, patent reexamination, patent prosecution, litigation, and copyright and trademark services. For more information, see the firm’s website at www.bskb.com
For more information contact:
Caroline R. Milani 703-205-8000
Caroline R. Milani
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