Smithkline Beecham Corp. (DBA GlaxoSmithKline) v. Excel Pharmaceuticals, Inc. et al. (Fed. Cir.)

January 29, 2004 on 4:21 pm | In Caselaw |

Smithkline Beecham Corp. (DBA GlaxoSmithKline) v. Excel Pharmaceuticals, Inc. et al.
Federal Circuit
DECIDED: January 29, 2004
“Record evidence shows that Glaxo narrowed the scope of claims 14-15 and 18-19 by amendment during prosecution of the ’798 patent to recite the critical term HPMC. The reason for making these narrowing amendments was to overcome a rejection for lack of enablement because the claims improperly embraced a genus of sustained release agents. However, the present record does not address the foreseeability of PVA at the time of the narrowing amendment. Thus, this record does not address whether Glaxo has rebutted the presumption of surrendered equivalents. Upon remand, the trial court may address whether PVA constitutes a foreseeable sustained release agent or an unforeseeable technology. Because a material issue of fact remains to be resolved, Excel was not entitled to summary judgment of noninfringement as a matter of law. The district court’s grant of summary judgment of noninfringement to Excel is vacated, and the case is remanded for further adjudication on the merits.”
Copy of the case here.

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