District Court Erred In Applying Two-Way Test For an Interference-In-Fact

Medichem, S.A. v. Rolabo, S.L. (Dec. 23) (Clevenger, GAJARSA, Dyk) (S.D.N.Y.: Rakoff)
KEY WORDS: INTERFERENCE
Fed Cir vacates decision that there was no section 291 interference-in-fact. The patents cover processes for making Loratadine (a/k/a Claritin) via “McMurry reactions.” The Fed Cir first held that interference-in-fact determinations should be reviewed according to their underlying questions on anticipation (clear error) and obviousness (de novo on top of clear error). On the merits, Rolabo’s claim was an open-ended “comprising” claim, so the district court erred in determining that the claim excluded a tertiary amine simply because it failed to recite such an amine. With the claim properly construed, the first leg of the two-way test for an interference-in-fact was met because the narrow claims of the Medichem patent anticipated the broader claims of the Rolabo patent. The district court had not reached the second leg of the two-way test, so the Fed Cir remanded for factual findings. The district court also erred in determining priority before considering the interference-in-fact issue, since the latter is a jurisdictional prerequisite for the former. Finally, Medichem had sought a reissue during appeal to start a PTO interference, and the Fed Cir strongly suggested that the district court should stay proceedings on remand until the PTO finished its work.
Decision