The depicted formula and caption do not demonstrate a concession by Dr. Maienfisch that the
‘146 patent describes O and S in the middle position of the Z-chain. At best, the formula and
corresponding caption show that sometime after 1989, i.e., >1989, Novartis and others were aware of
the depicted compound. It is not clear that the reference to “others” in the caption is a reference to the
inventors of the ‘146 patent. Further, it is not clear that the reference to >1989
refers to the publication of Shiokawa JP ‘943 as opposed to the filing of Maienfisch’s EP 483,055
Swiss priority document and/or the later filed Maienfisch ‘664 disclosure. The depicted formula and
caption do not demonstrate that the ‘146 patent directed one skilled in the art to the claimed 1,3,5-
oxadiazines.
D. Shiokawa Preliminary Motion 4 that Maienfisch’s Claims are Unpatentable over Prior
Art
Shiokawa’s Japanese patent application JP 1-54943 (“JP ‘943") was published on September
18, 1990 and is available as prior art under 35 U.S.C. 102(b) as to Maienfisch’s U.S. 09/136,664
application. JP ‘943 describes heterocyclic compounds and insecticidal compositions and methods19
employing the heterocyclic compounds as the active component. (Certified Translation of JP ‘493, SX
2023, pages 1-3). Maienfisch’s claimed compounds, with the exception of the tautomers, fall within the
literal scope of the heterocyclic compounds described by JP ‘943 and a majority of Maienfisch’s
19Shiokawa also contends that Maienfisch ‘664 is unpatentable over Shiokawa U.S. Patent No.
5,032,589. (Shiokawa Preliminary Motion 4, Paper No. 37, p. 1). Shiokawa’s U.S. Patent and laid
open JP publication are “substantively identical.” (Shiokawa Preliminary Motion 4, p. 2). As the
disclosures of the two documents are substantively identical we discuss the patentability of Maienfisch
‘664 with respect to Shiokawa’s laid open JP publication with the understanding that the analysis would
be the same as that for Shiokawa’s 5,032,589 patent.
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