US Patent Case Summaries
November 2021 #3December 3, 2021 | WRITTEN BY: Alston & Bird- Kirk Bradley, Thomas Finch每周汇总美国联邦巡回上诉法院发布的与专利相关的判例性意见，以及美国专利审判和上诉委员会认定的判例性或指导性意见。A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.Indivior UK Limited v. Dr. Reddy’s Laboratories S.A., et al.: 本案涉及权利要求百分比数值特征是否可以得到母案书面描述的支持，进而是否可以享受优先权的问题。本案的问题比较典型，也比较复杂，对我们实务工作也很有借鉴意义，联邦上诉法院的主流意见认为不能通过组合或推导得出权利要求里这些百分比数值特征，但是少数持异议的法官则认为主流意见对母案进行了误读，母案完全记载了这些百分比数值特征。
Indivior UK Limited v. Dr. Reddy’s Laboratories S.A., et al., Nos. 2020-2073, -2142 (Fed. Cir. (PTAB) Nov. 24, 2021). Opinion by Lourie, joined by Dyk. Opinion concurring in part and dissenting in part by Linn.
Dr. Reddy’s initiated an IPR challenging claims 1–5 and 7–14 of a patent owned by Indivior relating to orally dissolvable films containing therapeutic agents. Claim 8 requires a specific polymer weight percentage, and the other claims require a range of polymer weight percentages. Dr. Reddy’s argued that the polymer weight percentage limitations lacked written description support in a parent application and thus were not entitled to the benefit of the parent application’s filing date. Indivior disagreed and argued that the parent application sufficiently supported the claims, but conceded anticipation of the claims if they are not given the parent application’s filing date.The Patent Trial and Appeal Board held that claims 1–5, 7, and 9–14 lacked written description support for the claimed ranges and thus were anticipated, but that claim 8 had sufficient support and thus was not anticipated. Both parties appealed. The Federal Circuit affirmed. Addressing the claims reciting a range of polymer weight percentages, the court held that a skilled artisan would not be able “to reasonably discern a disclosure of that range” in the parent application. The court held that the specification was not sufficiently clear: “Here, one must select several components, add up the individual values, determine the aggregate percentages, and then couple those aggregate percentages with other examples … to create an otherwise unstated range. That is not written description of the claimed range.”Addressing claim 8, the Federal Circuit reached the opposite conclusion. Claim 8 did not require a range, instead reciting “about 48.2 wt %” as the amount of polymer. The court explained that “even though … the number '48.2 wt %’ is not explicitly set forth” in the parent application, the court deferred to the Board’s fact-finding, accepting “that there is substantial evidence to support the Board’s decision concerning claim 8.”Judge Linn dissented in part. In his view, the parent application provided written description support for all of the challenged claims, including those reciting a range of polymer weight percentages. Judge Linn stated that the majority’s decision “rests on an improper reading” of the parent application, “applies an overly demanding standard for written description for ranges,” and “fails to follow our precedent.”大岭IP知识产权律师团队 北京观韬中茂律师事务所郝政宇律师团队，郝政宇律师毕业于西安电子科技大学，曾在国家知识产权局从事7年多发明专利审查和复审工作，此后在金杜律师所等多家机构执业多年，具有深厚的技术和法律背景，代理众多知名企业应对知识产权纠纷，担任多家企业法律顾问，主编《专利分析》、《科创板企业上市知识产权指南》等专著，团队成员全部毕业于知名院校，具有丰富的知识产权诉讼经验。主要业务领域：专利侵权诉讼、专利无效和行政诉讼、技术秘密和技术合同纠纷、专利申请代理、商标、著作权和不正当竞争诉讼、企业知识产权法律顾问等。
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