Jazz Pharms: Federal Register; Public Notice; and Printed Publications

Jazz Pharms., Inc. v. Amneal Pharms., Inc., — F.3d —, 2018 U.S. App. LEXIS 19268 (Fed. Cir. 2018)

The patented invention at issue in Jazz Pharms is not a drug or drug treatment, but rather to a “drug distribution system for tracking prescriptions” for drugs with a risk of abuse[1]  The PTAB found claims from all six patents to be invalid as obvious.

The core issue on appeal was whether a pre-filing disclosure by Jazz counted as a prior art “printed publication.”

Printed Publication: As the language suggests, a “printed publication” must be both “printed” and also a “publication.”  These requirements though have been broadly construed.  “Printed” publications go well beyond physical hard-copies to allow for various media – including video and online forms.  To be a “publication,” the reference needs to be made sufficiently available to the public – publication.  In the leading case of In re Hall,[2] the Federal Circuit explained that accessibility to the relevant public is key – we ask “whether interested members of the relevant public could obtain the information if they wanted to.”  Although the court has developed a number of guide posts, the question of sufficient availability is seen as a factual inquiry handled on a case-by-case basis.

The prior art here was developed as part of an FDA drug safety review for one of Jazz’s drug products that was known as a potential date-rape drug.  In May 2001, the FDA announced in the Federal Register an upcoming public meeting – noting that the focus of the meeting would be on risk management for the drug.  The notice included a hyperlink to the pin-cite that eventually included meeting information, including background material, minutes, transcripts, and slides.

With these facts, Jazz Pharms appears an easy case – the materials were freely available online and relevant members of the public were directed to the material via the official public source.

A few caveats here:

  • The materials were not proven to be searchable or indexed at the time. In response, the court explained that these are not required elements of publication if sufficiently disseminated via other mechanisms.
  • Jazz argued that folks of skill would not have seen the notice in the Federal Register and therefore not have been pointed to the underlying documents. In response, the Federal Circuit explained that a Federal Register notice might not always be sufficient to place the relevant public on notice of a publication, but that it was sufficient in this case since it was indexed and directed toward members of the public interested in systems to protect the public from potentially dangerous drugs.  The court also endorsed the PTAB’s “sensible observation that the purpose of the Federal Register is to provide notice of government action such as the advisory committee meeting here.”

Note here that with publication, the touch stone is “accessibility” rather than “actual access.”  The court has repeatedly explained that “[i]f accessibility is proved, there is no requirement to show that particular members of the public actually received the information.”  Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560 (Fed. Cir. 1988).

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[1] U.S. Patents 7,668,730, 7,765,106, 7,765,107, 7,895,059, 8,589,182, 8,457,988.

[2] In re Hall, 781 F.2d 897 (Fed. Cir. 1986).

4 thoughts on “Jazz Pharms: Federal Register; Public Notice; and Printed Publications

  1. 2

    When Judge Newman agrees with an opinion authored by Judge Lourie, I assume the panel reached the correct decision. The present case is of interest in that regard because of Judge Newman’s vigorous dissent some years ago in a case in which the panel said that a single unindexed copy of a Canadian patent application that sat on a shelf in Ottawa constituted prior art.

  2. 1

    Jazz Pharms is not a drug or drug treatment, but rather to a “drug distribution system for tracking prescriptions” for drugs with a risk of abuse[1] The PTAB found claims from all six patents to be invalid as obvious.

    The claims are ridiculous and the attempt to create a prior art issue out of the Federal Register publication was a maneuver born of pure desperation. 100% pure unadulterated j u n k.

    The claims are drawn to a “computerized method of distributing a prescription drug under exclusive control of an exclusive central pharmacy.” It doesn’t matter at all for utility patent purposes whether the distributed object is a “prescription drug.” Other than the absurd and ineligible information processing g@ rbage recited in the claim (e.g., checking “credentials” of prescribing doctors – good grief S00per TECHN0! compare data to data in a look-up table! omg omg omg) the only active step in the claim is “mailing the prescription drug to the patient”.

    These claims are yet another poster child for getting Congress to expressly expand the IPRs and CBM regimes so that they permit examination of eligibility issues in methods that don’t recite money/finance-related processing steps.

    1. 1.1

      1. A computerized method of distributing a prescription drug under exclusive control of an exclusive central pharmacy, the method comprising:

      receiving in a computer processor all prescription requests, for any and all patients being prescribed the prescription drug, only at the exclusive central pharmacy from any and all medical doctors allowed to prescribe the prescription drug, the prescription requests containing information identifying patients, the prescription drug, and various credentials of the any and all medical doctors;

      requiring entering of the information into an exclusive computer database associated with the exclusive central pharmacy for analysis of potential abuse situations, such that all prescriptions for the prescription drug are processed only by the exclusive central pharmacy using only the exclusive computer database;

      checking with the computer processor the credentials of the any and all doctors to determine the eligibility of the doctors to prescribe the prescription drug;

      confirming with a patient that educational material has been read prior to shipping the prescription drug;

      checking the exclusive computer database for potential abuse of the prescription drug;

      mailing the prescription drug to the patient only if no potential abuse is found by the patient to whom the prescription drug is prescribed and the doctor prescribing the prescription drug;

      confirming receipt by the patient of the prescription drug; and

      generating with the computer processor periodic reports via the exclusive computer database to evaluate potential diversion patterns.

      1. 1.1.1

        The claim should add:


        thereby making the exclusive computer a prime target for hackers.

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