SUMITOMO DAINIPPON PHARMA CO. v. EMCURE PHARMA, 17-1798, 17-1799, 17-1800, decided April 16, 2018

U.S. Patent No. 5,532,372, directed to imide compounds.

The claim recited a molecular structure argued to be a racemic mixture (50-50) of two enantiomers based on similarity to a compound in the specification (page 6).  The plain claim language and specification indicate that the claim at least covers the (-)enantiomer (pages 7-8).  The specification does not infer a disclaimer of other than racemic or even use the term racemic, so there is no teaching that the claimed molecule should be considered racemic (pages 9-12).  Since the alleged infringer also includes this (-) enantiomer, there is infringement (pages 2-3).

Hindsight: Chemistry is beyond me, but it appears that including a discussion of racemic in the specification and specific indication of the claimed molecule as not being racemic or including racemic and non-racemic would have helped.

Expertise. Quality. Value.

At Lempia Summerfield Katz, we work hard to acquire your patents, trademarks, and copyrights and assist you from the initial application stage to registration processes and through the issuance and return on investment of the protected technology or creative asset.

Share this post