www.bioworld.com/articles/495906

KEY POINTS OF THE FACTOR VIII RULING

March 12, 1991

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.