We will be discussing one Federal Circuit case and one Ninth Circuit case during our weekly SoCal IP Institute meeting on Monday, May 21, 2012. Brief synopses are presented below.

In re Montgomery, Case No. 2011-1376 (Fed. Cir. May 8, 2012) (attached).

The examiner rejected appellant’s claims in a patent application towards a method for treatment or prevention of stroke by administering the drug ramipril.  The claims were rejected as anticipated by four prior art references that described the administration of ramipril to subjects at risk of stroke, but did not specifically disclose treating or preventing stroke with ramipril.  The Board of Patent Appeals and Interferences affirmed the rejection stating that ramipril inherently treats or prevents stroke and it does not matter that those of ordinary skill may not have recognized these inherent characteristics.

The Federal Circuit affirmed the Board’s decision stating that a reference may anticipate inherently if a claim limitation that is not expressly disclosed is necessarily present in the single anticipating reference.  They continued by stating that one of the prior art references discloses a protocol for the administration of ramipril to stroke-prone patients, and administering ramipril to stroke-prone patients inevitably treats or prevents stroke.  Thus, the Federal Circuit held that the prior art inherently anticipated the claims at issue.

Pom Wonderful LLC v. The Coca-Cola Co., Case No. 10-55861 (9th Cir. May 17, 2012) (attached).

Pom Wonderful sued Coca-Cola, the makers of the Minute Maid brand, for false advertising under the Lanham Act and state-law unfair competition and false advertising claims.  Minute Maid advertised their product as “Pomegranate Blueberry” when it only contained 0.3% pomegranate juice and 0.2% blueberry juice.  The district court held that because the Food and Drug Administration had approved of the Minute Maid labels, it barred pursuit of both the name and labeling aspects of Pom’s Lanham Act claim.  The district court also held that Pom lacked standing to bring the state-law claims because Pom did not meet the prerequisite of being entitled to restitution.

On appeal, the Ninth Circuit affirmed-in-part and held that the naming component of Pom’s claim was barred because FDA regulations authorize the label name Coca-Cola had chosen.  However, the Court vacated the district court judgment as to Pom’s state-law claims pointing out that the California Supreme Court had recently made clear that standing to sue under state-law unfair competition and false advertising claims does not depend on eligibility for restitution.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, May 21, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning.