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In re Thorpe

40 Citing cases

  1. Smithkline Beecham Corp. v. Apotex Corp.

    439 F.3d 1312 (Fed. Cir. 2006)   Cited 282 times   3 Legal Analyses
    Holding arguments insufficiently developed in briefing are forfeited

    While the patent statute does not provide for product-by-process claims, the courts have long recognized the appropriateness of such claims. See, e.g., In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985); In re Brown, 59 C.C.P.A. 1036, 459 F.2d 531, 535 (1972); In re Steppan, 55 C.C.P.A. 791, 394 F.2d 1013, 1018 (1967). The purpose of product-by-process claims is to allow inventors to claim "an otherwise patentable product that resists definition by other than the process by which it is made."

  2. Greenliant Systems, Inc. v. Xicor LLC

    692 F.3d 1261 (Fed. Cir. 2012)   Cited 21 times   2 Legal Analyses
    Finding surrender where "[d]uring prosecution . . . , [the applicant] both amended claim 13 to add the . . . limit and relied on the . . . limit . . . to overcome prior art"

    “Product-by-process claims ... enable an applicant to claim an otherwise patentable product that resists definition by other than the process by which it is made.” In re Thorpe, 777 F.2d 695, 697 (Fed.Cir.1985). “In determining validity of a product-by-process claim, the focus is on the product and not the process of making it.” Amgen Inc. v. F. Hoffman–La Roche Ltd., 580 F.3d 1340, 1369 (Fed.Cir.2009).

  3. In re Downing

    2018-1795 (Fed. Cir. Dec. 7, 2018)   Cited 20 times
    Looking for an antecedent basis for a claim term in the same claim in which the claim term appears

    A product-by-process claim is one in which a product is claimed by the "process by which it is made." In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). The product claimed in claim 1 is a "resource planning forecast product.

  4. In re Nordt Dev. Co.

    881 F.3d 1371 (Fed. Cir. 2018)   Cited 6 times   3 Legal Analyses

    We have held that, when considering the patentability of product claims that contain process limitations, claim scope is generally based on the product itself, not the process. In re Thorpe , 777 F.2d 695, 697 (Fed. Cir. 1985) ("[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself."). If the process limitation connotes specific structure and may be considered a structural limitation, however, that structure should be considered.

  5. Abbott Laboratories v. Sandoz, Inc.

    566 F.3d 1282 (Fed. Cir. 2009)   Cited 287 times   7 Legal Analyses
    Holding that a chemical formulation that the applicants could have claimed given that it appeared in their priority application, but chose not to, falls outside the scope, literal or equivalent, of the claim

    Indeed, this court itself had articulated that rule: "For this reason, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself." In re Thorpe, 177 F.2d 695, 697 (Fed. Cir. 1985) (emphasis added).

  6. Atlantic Thermoplastics Co., v. Faytex Corp.

    970 F.2d 834 (Fed. Cir. 1992)   Cited 75 times   3 Legal Analyses
    Holding that the process steps do serve as claim limitations - a product made by a different process than that claimed in the patent's product-by-process claim is not covered by the patent

    The practice and governing law have developed in response to the need to enable an applicant to claim an otherwise patentable product that resists definition by other than the process by which it is made. For this reason, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). The entire history of product-by-process claims suggests a ready explanation for the apparent difference of view about treatment of those claims during ex parte administrative proceedings and during litigation.

  7. Pacira Pharm. v. eVenus Pharm. Labs.

    Civil Action 21-19829 (D.N.J. Aug. 9, 2024)

    If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (internal citations omitted). Taking all the evidence together, the manufacturing process disclosed in the ‘495 Patent appears to yield a product with the Six-Month Erucic Acid that is obvious from the six-month erucic acid range disclosed by the prior product.

  8. Purdue Pharma L.P. v. Teva Pharms., U.S., Inc. (In re Oxycontin Antitrust Litig.)

    994 F. Supp. 2d 367 (S.D.N.Y. 2014)   Cited 20 times

    For the purposes of validity, the Court considers only the product limitations of a claim, not process limitations or source limitations that add no patentable significance to the end product. See In re Thorpe, 777 F.2d 695, 697 (Fed.Cir.1985). The asserted claims of the '799, '072, and '800 Patents are product-byprocess claims.

  9. Silicon Storage Technology, Inc. v. Xicor LLC

    776 F. Supp. 2d 1072 (N.D. Cal. 2011)   Cited 1 times

    The examiner "reminded" Xicor that "it is the patentability of the final product per se which must be determined in a `product by process' claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product. . . ." Id. at 788 (citing In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985)). In response, Xicor stated that the apparatus claims were presented in product-by-process form because "the present invention . . . is not capable of independent definition in structural terms."

  10. Bonito Boats, Inc. v. Thunder Craft Boats, Inc.

    489 U.S. 141 (1989)   Cited 581 times   16 Legal Analyses
    Holding that a state law prohibiting people from copying unpatentable boat hull designs was preempted because it sought to provide patent-like protection to boat designs not protectable by patent laws and it "contravenes the ultimate goal of public disclosure and use that is the centerpiece of federal patent policy"

    Under federal law, this type of protection would be unavailable to petitioner absent satisfaction of the requirements of patentability. See In re Thorpe, 777 F.2d 695, 697 (CA Fed. 1985) (product-by-process patent properly denied where end result was indistinguishable from prior art). In this case, the Bonito 5VBR fiberglass hull has been freely exposed to the public for a period in excess of six years.