Last Month at the Federal Circuit
Last Month at the Federal Circuit

July 2012

Looking Ahead

This month, in Sciele Pharma Inc. v. Andrx Corp., No. 12-1228 (Fed. Cir. July 2, 2012), the Federal Circuit addressed the issue of a modified presumption of validity based on certain events during prosecution at the PTO. 

In this case, the patentee argued that a heightened presumption of validity should be afforded when a prior art reference asserted at trial had been previously considered by the PTO during prosecution.  Alternatively, the accused infringer argued that a lower presumption of validity should be afforded where the PTO committed an error, such as in this case, issuing a patent containing previously rejected or cancelled claims.  The Federal Circuit rejected both arguments, stating that the burden of proof remains the same “clear and convincing evidence of invalidity” standard.  The Court, however, acknowledged that circumstances surrounding prosecution at the PTO could impact the weight that the fact-finder assigns to certain evidence in making its invalidity determination.

Read the full summary of the Court’s decision in next month’s edition of Last Month at the Federal Circuit.