Chemical Process Infringement

[manoj pandey]

There is a patent 123 which claims a chemical process of conversion of A to C through an intermediate B, where it is not clear wether B was isolated or converted to C in-situ. However, various examples suggest that B was isolated. Suppose a company Z sells the product C where C was preared by the insitu conversion of B, Is the company Z infringing the patent 123?

[bartmans]

In general, for infringement the infringing process should contain all the steps of the process as claimed. If the claim reads:
1. A method of producing C by
        a) conversion of A into B; and
        b) subsequent conversion of B into C.

then company Z only performs the second step of the method and does not literally infringe. However, if they buy B from a company X, where this company X produces B by conversion of A, then the process performed by the sum of companies X and Z would be infringing. It will then depend on the actual relation between X and Z if this will be seen as infringement (I remember that there is some case law on infringing processes that are performed in a joint effort by two companies).
To my opinion, it seems fair that in some cases this is to be seen as infringement. Otherwise, it would be easy for a company that wants to copy a patented process to establish two daughter companies, and let the first one processing the firs step(s) of the process and the other performing the remaining steps.

[manoj pandey]

MY question is bit different. Here is company Z produces C with A as starting material. The only difference is that B is connverted to C in-situ without being isolated (as in examples of patent 123). In such case would Z be infringing patent 123?

[petethebody]

MY question is bit different. Here is company Z produces C with A as starting material. The only difference is that B is connverted to C in-situ without being isolated (as in examples of patent 123). In such case would Z be infringing patent 123?

This sounds like a written description issue - did they claim all methods of converting A to C, but only disclose one.  Read Ariad v. Eli Lilly.  Also check out the USPTO training materials; although not law, the Federal Circuit has approvingly cited these before, especially in the biotech arena.  Ultimately, this question boils down to whether the four corners of the patent make it clear that the patentee possessed the "in situ" method to one skilled in the art.  Look to see if a person skilled in the art would know how to make in situ.

Alternatively, if it passes the W.D. requirement, you are probably looking at a claim construction issue.  Check PAIR to see if they ever disclaimed in situ.  Also see if the "in situ" method would make the patent anticipated.  Otherwise, it's an argument, but probably not the best.