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  • David Vance

Product-by-Process Claims, Part II

Little Red Riding Hood Visits the Land of Product-by-Process Claims

If you recall, the 14 October 2020 VanceIP News discussed "nested" product-by-process limitations. Biogen MA had asserted method of treating claims that contained product-by-process limitations. Because the product was previously known the product-by-process limitations were ignored and the patent invalidated.

Interestingly, product-by-process limitations are back in the news in a case where GlaxoSmithKline (GSK) was found to infringe product claims of a Vectura patent. There is a bit of a twist here as GSK argued that process limitations should be incorporated into the Vectura patent. Unfortunately for GSK, the Court disagreed but the analysis is still interesting. The Court pointed to two defining cases (i.e., porridge too cold and porridge too hot) and decided which one the Vectura patent more closely resembled. Read on and enjoy.

Porridge too cold-Continental Circuits v Intel. CC's patents claimed multilayer electric devices having tooth structures. The patents described a repetitive process that formed teeth that were superior to the teeth described in the prior art. However, the Court did not read the process claims into the product claims because the described process was "one technique" but not a required or essential technique.

Porridge too hot-Anderson v Fiber (think Anderson windows). Anderson's patents claimed "composite structural members'' (extruded PVC/wood products). The court limited the structural members to composite structural members made from pellets or linear extrudate. In other words, the court read process claims into the product claims. This was primarily because the patents emphasized certain properties that were achieved through pelletization (i.e., pellets were essential or required).

Porridge was just right-Vectura v GSK. Vectura's patent claimed composite active particles (CAPs) for pulmonary administration (think drug compositions that are inhaled). The patent covered CAPs containing an active ingredient wherein an additive material was attached to the particles. Vectura claimed that some of GSK's chronic obstructive pulmonary disease inhalation products infringed the patent. The patent describes how the composite active particles are made by "high energy milling" of active ingredient particles and additive material particles to attach the additive materials to the active particles. GSK argued that because Vectura's patent appeared to require a "high energy milling" process, the claims should be limited to CAPs made by such a process. The Court recognized that this case was a close call but held that it was closer to Continental than Anderson and did not read the process claims into the product claims. The milling process was not a required or essential process.

Today's takeaways: 1. To ensure your product claims are not limited to a specific process, your patent should refer to the process of making as "one process" or "one technique." If possible, provide an alternative process (even if it is just mentioned that other processes would be suitable). 2. When considering whether or not you might infringe a competitor's product claims, look at how the products are made and see if there is "required" or "essential" language linked to the process of making. This could form the basis for a non-infringement argument.

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