"consisting of" within a "comprising"?

Started by MYK, 04-25-17 at 03:38 PM

Previous topic - Next topic

MYK

Would there be any problem with having a "consisting of" nested inside a "comprising"?

"An X comprising a P and a Q, the Q consisting of C, D, and E."

Would there be any point, since the open-ended "comprising" would mean elements could be added to the X anyway?  Would this still guarantee that anyone adding elements to Q would not infringe?
"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

midwestengineer

Quote from: MYK on 04-25-17 at 03:38 PM
Would there be any problem with having a "consisting of" nested inside a "comprising"?

"An X comprising a P and a Q, the Q consisting of C, D, and E."

Would there be any point, since the open-ended "comprising" would mean elements could be added to the X anyway?  Would this still guarantee that anyone adding elements to Q would not infringe?

Patently o recently featured a Federal Circuit case that address this issue.  Shire Development v. Watson Pharma.

To answer your second questions, would adding element to Q guarantee non-infringement, it depends.  There is an exception to the general rule that when something consists of a number of elements, only things that consist of those number of elements read on the something.  The exception is that if a second thing is added to the something that is tangential to the function of the something, the combination still reads on the something.

Let's say A consists of B and C.  A competitor creates D that consists of B, C, and E.  The general rule would dictate that D does not read on A.  However, the exception to the rule is that if E does not impact the function of B and C thereby rendering D to perform the same function as A, then D reads on A.

However, this exception is rarely found and it appears that courts lean on it as a tool of equity.  In Shire, the court determined that the exception did not apply but has a good discussion of the exception.

mersenne

For anybody who's interested (like me!  Thanks, MWE!) the case was decided Feb. 2017 after some previous appeals.  My service doesn't have a Fed. Reporter cite for it yet, but it says USCA-FC, 2016-1785.  The patent is 6,773,720 and claim 1 is:
Quote from: 6,773,720 Claim 1
1. Controlled-release oral pharmaceutical compositions containing as an active ingredient 5-amino-salicylic acid, comprising:
a) an inner lipophilic matrix consisting of substances selected from the group consisting of unsaturated and/or hydrogenated fatty acid, salts, esters or amides thereof, fatty acid mono-, di- or triglycerids, waxes, ceramides, and cholesterol derivatives with melting points below 90° C., and wherein the active ingredient is dispersed both in said the lipophilic matrix and in the hydrophilic matrix;
b) an outer hydrophilic matrix wherein the lipophilic matrix is dispersed, and said outer hydrophilic matrix consists of compounds selected from the group consisting of polymers or copolymers of acrylic or methacrylic acid, alkylvinyl polymers, hydroxyalkyl celluloses, carboxyalkyl celluloses, polysaccharides, dextrins, pectins, starches and derivatives, alginic acid, and natural or synthetic gums;
c) optionally other excipients;
wherein the active ingredient is present in an amount of 80 to 95% by weight of the total composition, and wherein the active ingredient is dispersed both in the lipophilic matrix and in the hydrophilic matrix.

(Too bad this site doesn't allow attachments...I'd be happy to upload the decision itself.)
Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

MYK

Quote from: mersenne on 04-25-17 at 10:36 PM
For anybody who's interested (like me!  Thanks, MWE!)
Indeed, thanks!  And thanks, David -- I saw your thread on this just after I posted this question.  How weird that we both ran into the same thing at the same time -- and as it turns out, right around when a case came out.  The mind boggles, or at least mine does.
"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

MYK

"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

Weng Tianxiang

Hi MYK,

Thank you for the cited reference.

But it is a lawsuit about a pharmaceutical medicine. Could you please give a simpler explanation using only X, Y and Z to talk about the key points on what "consist" among "consisting", especially "Because Watson's ANDA Product does not satisfy the Markush group requirements
in claim 1(b), we reverse and remand with instructions to enter judgment of non-infringement. "

Thank you.

Weng

still_learnin

Quote from: Weng Tianxiang on 04-26-17 at 05:45 PM
Hi MYK,

Thank you for the cited reference.

But it is a lawsuit about a pharmaceutical medicine. Could you please give a simpler explanation ... "Because Watson's ANDA Product does not satisfy the Markush group requirements
in claim 1(b), we reverse and remand with instructions to enter judgment of non-infringement. "


Here's a good summary of the case explaining some of what you're asking about:


http://www.klgates.com/markush-madness-watson-avoids-infringement-by-adding-an-element-to-a-formulation-04-04-2017/
The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.

Weng Tianxiang

The reference cited by still_learnin has a very interesting title:
"Markush Madness: Watson Avoids Infringement by Adding an Element to a Formulation"

It relates to a Markush group in claim structure.

Here is some text within Wikipedia
"Markush claims were named after Eugene Markush, the first inventor to use them successfully in a U.S. patent (see, e.g., U.S. Patent Nos. 1,506,316, 1,982,681, 1,986,276, and 2,014,143), in the 1920s to 1940s. See Ex parte Markush.[19]

According to the USPTO, the proper format for a Markush-type claim is : "selected from the group consisting of A, B and C." [20]

In August 2007, the USPTO unsuccessfully proposed a number of changes to the use of Markush-type claims.[21]"

In my two applications I used Markush claims as suggested by still_learnin, but when writing I didn't remember and find on which post he made the suggestion, so I wrote my two versions of Markush claim:

"a)   scanning for a concurrent link statement of a plurality of types, the concurrent link statement identifying a first code component and a second code component in HDL for the integrated circuit, and HDL being selected from a group of VHDL, Verilog and SystemVerilog; " And most importantly, the Examiner didn't rejected or objected.


Another amendment has not been filed so that my change is as follows in USPTO formal format:
"a)   coding a first code component in HDL, HDL being selected from the group consisting of VHDL, Verilog and SystemVerilog, and the first code component being synthesized to generate a first logic block of the integral integrated circuit;"

I really don't understand what the two versions of Markush claims are.

1. "HDL being selected from the group consisting of VHDL, Verilog and SystemVerilog;" I changed "the" to 'a' because the group has no antecedence.

2. I don't know why it needs consisting either.

What is your comment?

Thank you.

Weng




Rabid Levity

Quote from: Weng Tianxiang on 05-01-17 at 09:10 PM
1. "HDL being selected from the group consisting of VHDL, Verilog and SystemVerilog;" I changed "the" to 'a' because the group has no antecedence.

2. I don't know why it needs consisting either.


1.  You're right that "the" group lacks strict antecedence, but it is the common format.  I don't know whether it was decided that it provides its own or just that everyone would understand. 

2.  The group is "consisting of yada yada yada" rather than the group "comprising yada yada yada" because a Markush is intended to limit the thing being described (HDL) to only those elements listed in the group (in your case VHDL, Verilog and SystemVerilog).  If people write, "HDL being selected from the group comprising VHDL, Verilog and SystemVerilog" then there is no limitation on HDL at all, because it can be one of the 3 types listed, or (due to "comprising") anything else in the world.

Weng Tianxiang

"If people write, "HDL being selected from the group comprising VHDL, Verilog and SystemVerilog" then there is no limitation on HDL at all, because it can be one of the 3 types listed, or (due to "comprising") anything else in the world."

My question now is whether or not HDL defintion as "HDL being selected from the group comprising VHDL, Verilog and SystemVerilog is indefinite???

My intention is to use "HDL being selected from a group comprising VHDL, Verilog and SystemVerilog that is what I want!

Thank you.

Weng



www.intelproplaw.com

Terms of Use
Feel free to contact us:
Sorry, spam is killing us.

iKnight Technologies Inc.

www.intelproplaw.com