In preparing for class, I was reading through the old case about product-by-process claims, which recognizes that under the broadest reasonable construction standard, a claim is unpatentable if the product is old, but it's valid, after issuance, if just the product is old. In other words, the limitations are ignored during prosecution because the claims are viewed as product claims. Atlantic Thermoplastics, 970 F.2d 834 (Fed. CIr. 1992).
Okay, so… this just makes my head spin. Suppose a patent issues, covering "a shoe made by the process of A and B." To invalidate the claim, an accused infringer would have to show the prior art had a shoe made by the process of A and B, but in IPR, he merely has to show the shoe in the prior art.
I don't even know how to make sense of that result. Assume no stay, you end up with an unpatentable valid patent…. sort of ….
Professor, I think you are misreading Atlantic Thermoplastics. I think the case is discussing how the process limitations can be ignored by the PTO when assessing patentability, but must be given weight by a district court when considering infringement. However, it does not state that the process limitations must be given weight for purposes of determining validity. And in any event, there is case law stating that when a district court assesses validity, it may ignore the process limitations and focus solely on the product. Amgen Inc. v. F. Hoffmann-La Roche, Ltd., 580 F.3d 1340, 1370 (Fed. Cir. 2009). Kind of makes sense (in the SCOTUS sense) because the claim is to a product. The discussion of the BASF case emphasizes this point.
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