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Senior Party in Interference Can “Rest Easy” on Sleep Apnea Count

June 28, 2001

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Last Month at the Federal Circuit - July 2001

Judges: Clevenger (author), Rader, and Gajarsa

In Rapoport v. Dement, No. 00-1451 (Fed. Cir. June 28, 2001), the Federal Circuit affirmed a decision of the Board, which had awarded judgment of priority as to the sole count of an interference in favor of William Dement and others (collectively “Dement et al.”).

The technology at issue concerns a method for treating sleep apnea, the transient cessation of breathing during sleep. In particular, the count in this interference concerned the administration of a therapeutically effective amount of certain azapirone compounds such as buspirone.

The interference was declared in January 1992, with Dement et al. designated as the senior party based on a filing date of February 12, 1990. The interference count defined azapirone compounds that include buspirone. Junior party, David Rapoport, filed a motion for judgment claiming that the subject matter of the count was anticipated or rendered obvious by a reference he had authored (“the Publication”). The Board denied this motion, finding that Rapoport had established a conception date of May 13, 1988, Dement was entitled to a 1986 date of conception, and Dement’s conception date inured to the benefit of his coinventors as well. As a result, the Board had awarded priority to Dement et al.

On appeal, Rapoport argued that the Board had erred in failing to find that the Publication anticipated or rendered obvious the Dement et al. claims. In addressing the issue, the Court reviewed the Board’s claim construction to determine whether the count concerned the treatment of the underlying respiratory problems of sleep apnea or both the underlying respiratory problems and consequential symptoms, such as fatigue, irritability, depression, and stress. After reviewing the patent and other evidence, the Court agreed that, properly construed, the count concerned only the underlying respiratory causes of sleep apnea.

Having so construed the claim, the Court further agreed that the Publication failed to teach the use of buspirone to treat the underlying conditions of sleep apnea. Rather, the Publication disclosed the use of buspirone only to treat anxiety in patients suffering from sleep apnea. Thus, the Court affirmed the Board’s holding that the Publication did not anticipate or render obvious the interference count.