Monday's Court of Appeals (CoA) ruling on Factor VIII coveredseveral key issues, some of which were originally decided bythe District Court (DC) in Genentech and Chiron's favor:

Validity of Patent Reissue:

DC: Scripp's claims for a reissued patent are invalid due to lackof enablement and potential fraud.

CoA: Scripps' claims under the reissued patent are not invalid; anew trial is needed to determine the issue of the open-endedscope of the claims.

Anticipation:

DC: Scripps patent was invalid because its claims wereanticipated (described in a previous publication).

CoA: This issue must go to trial.

Infringement of Scripps' Patent

DC: Genentech and Chiron had infringed on the patent.

CoA: This issue must go to trial.

Inducement to Infringe

DC: Genentech induced Cutter Labs to infringe when it licensedFactor VIII to Cutter for production.

CoA: Agreed with the lower court.

Inequitable Conduct:

DC: Scripps did not purposefully hide prior art from the Patentand Trademark Office.

CoA: Agreed with the lower court.

Best Mode:

DC: Scripps did not disclose its best method for producingFactor VIII.

CoA: Scripps did disclose its best method.

(c) 1997 American Health Consultants. All rights reserved.

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