In those (in retrospect) halcyon days more than a decade ago (before Mayo, Myriad, Alice, and the subject matter eligibility quagmire arose), perhaps the most significant Supreme Court.
I. Introduction - The Leahy-Smith America Invents Act (“AIA”) was years in the making. From the first patent reform bill introduced by Representative Lamar Smith in June 20052.
In Sanofi-Aventis Deutschland GMBH v. Mylan Pharms, Inc., No. 21-1981 (Fed. Cir. May 9, 2023), the Federal Circuit reversed the PTAB's finding that Sanofi's patent claims were obvious.
A judge in the District of Delaware has ruled that an estoppel under 35 U.S.C. § 315(e)(2) does not apply to prior-art products, even if those products are "cumulative" of prior-art patents.
Holding
In
Daikin Indus., Ltd v. Chemours Co. FC, LLC, No.
2020-1616, 2021 WL 717017 (Fed. Cir. Feb. 24, 2021), the Federal
Circuit panel of Judges Lourie, Wallach, and Chen affirmed a
decision of the Patent Trial and Appeal Board (Board), finding
claims 1-5 of U.S. Pat. No. 9,574,123 (the 123 patent)
unpatentable as obvious.
Background
Daikin Industries, Ltd (Daikin) owns the 123 patent,
directed to mixtures of hydrofluorocarbons (HFCs),
hydrofluoroolefins (HFOs), and one or more of a chlorofluorocarbon
(CFC), hydrochlorofluorocarbon (HCFC), chloromethane (HCC), and/or
3,3,3-trifluoropropyne (TFP).
Daikin, 2021 WL 717017 at 1. The 123 patent purports to solve the poor lubrication
issue of HFCs and HFOs by adding TFP or one or more