Amgen Inc. v. F. Hoffmann-LaRoche LTD et al

Filing 1030

Supplemental Proposed Jury Instructions by F. Hoffmann-LaRoche LTD, Roche Diagnostics GmbH, Hoffmann LaRoche Inc.. (Attachments: #1 Exhibit A (Proposed Jury Instructions: Product-By-Process Claims))(Toms, Keith)

Case 1:05-cv-12237-WGY

Document 1030-2

Filed 09/10/2007

Page 1 of 1

Exhibit A
SUPPLEMENTAL PROPOSED JURY INSTRUCTIONS PRODUCT-BY-PROCESS CLAIMS Sometimes a product may best be described by the process by which it is made, instead of by describing its structure or chemical characteristics. Such claims, which describe a product by describing the process by which it is made, are called "product-by-process" claims. 1 These claims are directed to specific products, any process steps you see in the claim are merely descriptive. 2 In other words, you could not patent a car just because you figured out a new process on how to put one together. You may, however, consider the process steps in the claim if you believe that they make the product itself different. 3 This would happen, for example, if your new process in making a car gave the car the ability to fly. That process changed the underlying product. The asserted claims of U.S. Patent No. 5,995,422 and 5,547,933 are product by process claims. As a result, the source or process limitations "purified from mammalian cells grown in culture" from the `422 patent and "non-naturally occurring," from the `933 patent only make the claimed products patentable if they serve to distinguish the structure of the claimed product from the products contained in the prior art.

1

Smithkline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed. Cir. 2006); Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1583 (Fed. Cir. 1991). 2 Smithkline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed. Cir. 2006); General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 373 (1938); 3 In re Luck, 476 F.2d 650, 653 (C.C.P.A. 1973).

736891 3099/501