Federal Circuit Finds Antares’ Patent Claims Invalid for Failure to Satisfy the “Original Patent” Requirement

| Printer friendly version

(November 17, 2014) The United States Court of Appeals for the Federal Circuit affirmed a lower court’s denial of Antares Pharma, Inc.’s (“Antares”) motion for a preliminary injunction seeking to enjoin Medac Pharma, Inc. and Medac GMBH (collectively, “Medac”) from infringing U.S. Patent No. RE44,846 (a reissue patent of U.S. Patent No. 7,776,015).  U.S. Patent No. RE44,846, entitled “Needle assisted jet injector,” states that it is “directed to a device for delivery of a medicament, and in particularly to a jet injector with a short needle to reduce the pressure at which the jet injector must eject the medicament for proper delivery.”  Figure 1 from the patent is illustrated below:

The Federal Circuit held the reissue claims were invalid “for failure to comply with the ‘original patent’ requirement of 35 U.S.C. § 251.”  According to the Court, to satisfy the “Original Patent” requirement, the original patent’s specification “must clearly and unequivocally disclose the newly claimed invention as a separate invention.”  The opinion stated that Antares’ original patent (U.S. Patent No. 7,776,015) claimed jet injection devices and Antares broadened its claims to cover any “injection device” on reissue and that any hints, suggestions, or indications in the specification to other means of injection were not enough to save the reissue claims.

Christie Matthaei
Christie Matthaei is an associate in our Seattle office. Ms. Matthaei represents various clients in all aspects of intellectual property disputes, with a focus on patent litigation. Ms. Matthaei also counsels clients on pre-litigation matters, including analyzing patent infringement and validity. Ms. Matthaei earned her J.D. from the George Washington University Law School, where she was a member of the American Intellectual Property Law Association Journal. During her time in law school, Ms. Matthaei interned for the White House, working in the Office of Science and Technology Policy. Prior to law school, Ms. Matthaei worked at Pacific Northwest National Laboratory as a chemical engineer on projects related to alternative energy and green chemicals. Ms. Matthaei obtained a B.S. in Chemical Engineering from the University of Washington. Ms. Matthaei was a summer associate in 2010 and joined the firm as an associate in 2011.
Click here to read full bio
View all posts published by Christie Matthaei »

Leave a Reply

By using this blog, you agree and understand that no information is being provided in the context of any attorney-client relationship. You further agree and understand that nothing herein is intended to be legal advice. This blog is solely informational in nature, and is not intended as, and should not be used as, a substitute for competent legal advice from a retained and licensed attorney in your state. Knobbe Martens LLP makes no representations or warranties as to the accuracy, completeness, timeliness or availability of the information in this blog. Knobbe Martens LLP will not be liable for any injury or damages relating to your use of, or access to, any such information. Knobbe Martens LLP undertakes no obligation to correct or update information on this blog, which may be incorrect or become incorrect or out of date over time. Knobbe Martens LLP reserves the right to alter or delete content or information on the blog at any time. This blog contains links and references to other websites and publications that you may find of interest. Knobbe Martens LLP does not control, promote, endorse or otherwise have any affiliation with any other websites or publications unless those websites or publications expressly state such an affiliation. Knobbe Martens LLP further has no responsibility for, and makes no representations regarding, the content, accuracy or any other aspect of the information in such websites or publications.