By: Mel R. Quintos

In 1991, the U.S. Court of Appeals for the Federal Circuit (CAFC), in Scripts Clinic & Research Foundation v. Genentech, Inc., held that „the correct reading of product-by-process claims is that they are not limited to product prepared by the process set forth in the claims.“ In 1992, however, the CAFC suggested the opposite view and held in Atlantic Thermoplastics Co. v. Faytex Corp. that „process terms in product-by-process claims serve as limitations in determining infringement.“

In May, 2009, in Abbott Laboratories v. Sandoz, Inc., a full panel of CAFC judges resolved the confusion between the two opposing lines of cases regarding the proper scope of product-by-process claims on infringement issues.

The issue in the Abbott Laboratories case is whether infringement of a product-by-process claim requires the practice of the claimed process. In resolving this issue, the court favored the position taken by the 1992 Atlantic Thermoplastics Co. case, and held that „process terms in product-by-process claims serve as limitations in determining infringement,“ and that „product by process claims are limited by and defined by the process.“ In explaining its logic in deriving this resolution, the court stated as follows:–click here to read more—