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Dr. Rouget "Ric" Henschel

Foley & Lardner, Washington, D.C.

Dr. Rouget F. (Ric) Henschel is a partner with Foley & Lardner LLP and vice chair of the firm’s Chemical & Pharmaceutical Practice. He is also a member of the firm’s Biotechnology & Pharmaceutical, Intellectual Property Litigation and International Practices and the Life Sciences Industry Team.  He graduated from Georgetown University Law Center (J.D., 1999), City University of New York (Ph.D., organic chemistry, 1990), the City College of New York (B.S., chemistry, 1981), and was a law clerk for Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit.

Henschel sat down with us to discuss his disappointment with the Federal Circuit’s April ruling in In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009). In this case, the appellate court affirmed an obviousness rejection by the Board of Patent Appeals and Interferences of claims submitted by Marek Kubin and Raymond Goodwin covering DNA molecules encoding a protein known as natural killer (NK) cell activation inducing ligand (NAIL).

The Federal Circuit concluded that the claimed methodology of isolating NAIL cDNA was essentially the same as the prior art given the known properties of these proteins, and thus “obvious to try” in light of the Supreme Court’s ruling in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). In doing so, the court rejected the continued application of In re Deuel, 51 F.3d 1552 (Fed. Cir. 1995), a biotech case which found “obvious to try” an inappropriate test for obviousness. Henschel, who represented amicus curiae Biotechnology Industry Organization (BIO) in this case, insists that KSR, which involved a mechanical pedal control for an automobile, is misapplied in this context, where the biotechnology inventions are much more complex and unpredictable. He also notes in the interview that, in focusing on how the applicants arrived at the claimed invention, In re Kubin ruling is in direct conflict with 35 U.S.C.§103(a), which states that “[p]atentability shall not be negatived by the manner in which the invention was made.” He points out that In re Kubin this case represents a step back for the biotech industry, and that some issues raised in this case should be addressed by the Federal Circuit en banc.

Henschel also discusses how the defense of inequitable conduct has become a scourge in patent law by adding to litigation costs and placing more patents at risk. He notes that, despite the high bar for proving inequitable established in the en banc ruling of Kingsdown Med. Consultants Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988), recent cases have created confusion and uncertainty as to both the materiality and intent prongs. He notes that more clarity from the appellate court is needed in this area.

Read the In re Kubin opinion.

Read the KSR International Co. v. Teleflex Inc. opinion.

Read the In re Deuel opinion.

For more information on Ric Henschel and Foley & Lardner, go to the firm’s website at http://www.foley.com/.

For more information on BIO, go to http://www.bio.org/.

 


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