Process defines product by process claims

Abbott Labs v. Sandoz, 566 F.3d 1282 (Fed. Cir. 2009),

In Abbott Labs, the Federal Circuit resolved this long-standing inconsistency and upheld the view expressed in Atlantic Thermoplastics that “process terms in product-by-process claims serve as limitations in determining infringement.” 566 F.3d at 1293 (citing Atlantic Thermoplastics, 970 F.2d at 846-847). The Court expressly overruled Scripps to the extent that it conflicted with this ruling. Id. The Court determined that this view comported with the Supreme Court’s opinion in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), in which the high court stated that “(e)ach element contained in a patent claim is deemed material to defining the scope of the patented invention.” 520 U.S. at 19.

The Court acknowledged the validity of product-by-process claims, though it made clear that the process terms are limiting in terms of enforcement. The court based its holding on the public notice function of patent claims, holding that where a patent holder claims a new product solely in terms of a particular process, infringement must be determined by “comparison of the claimed and accused infringing processes.” 566 F.3d at 1294.

Three judges led by Judge Newman filed a long dissent, arguing that the majority opinion overturned a century of precedent that allowed patent applicants to protect a new product whose structure is not fully known or readily described by merely including sufficient reference to the process required to create it. 566 F.3d at 1299-1300. The dissent calls for a “rule of necessity” for difficult-to-define inventions. Id. at 1300.

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