Judge Robinson issued a memorandum opinion yesterday in Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., C.A. No. 08-290-SLR (D. Del. Feb. 24, 2010). Plaintiff Genetics Institute, LLC filed a 35 U.S.C. § 291 action seeking a determination of priority for their patent over two patents owned by Novartis Vaccines and Diagnostics, Inc. Id. at 1-2. To satisfy § 291, the plaintiff must show interference-in-fact; part of that showing is the "two way test," which means that the second patent must be either anticipated by or obvious in light of the first patent. Id. at 10-12. Defendants brought a motion to dismiss, arguing that plaintiffs had failed to meet the standard.
The Court's application of the anticipation and obviousness tests was relatively straightforward. It turned on the Federal Circuit's holding that "[t]he disclosure of a range 'is only that of a range, not a specific [point] in that range[, i.e.] the disclosure of a range is no more a disclosure of the end points of the range than it is each of the intermediate points." Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 (Fed. Cir. 2006). The patents involved amino acid gaps in a protein to assist in blood clotting; because the range of gaps did not line up properly under Atofina, the court held that the prior patent did not anticipate the subsequent ones. Id. at 18-24.
Along the way, the court also clarified that patent term extensions under the Hatch-Waxman Act apply to the patent itself, not to specific claims within the patent. Id. at 16.