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CAFC Weekly: April 30, 2010

by Orlando Lopez

The opinions and orders for this week were dominated by inequitable conduct cases.

In an order vacating the previous opinion in Therasense v. Becton, Dickinson and Company, the Court granted an en banc rehearing, posing six questions related to materiality and intent and the interplay between them. This is a welcome order for rehearing by the full Court since the number of patents being rendered unenforceable by inequitable conduct has grown to the point of “an epidemic.”

On the heels of the CAFC deciding to take Therasense up for rehearing en banc, the Court decided another inequitable conduct case, Avid Identification Systems v. The Crystal Import Corporation. In Avid, the Court tackles what the definition of “persons involved” is in the duty of candor.The result does not fare well for Avid since the court decided that Dr. Stoddard, Avid’s President, was “a person involved” and that Dr. Stoddard had demonstrated a precursor product at a trade show that did not contain all the elements of the claimed invention, but was related. The public demonstration was deemed to be material and intentionally withheld. Including Dr. Stoddard in the “person involved category” led to the patent being held unenforceable. The dissenting opinion demonstrates why an en banc hearing is required for inequitable conduct, but the Therasense hearing will not reverse Avid.

Rounding out the week were three other cases:

In Medtronic Navigation v. St. Louis University, the CAFC reversed the order of the District Court awarding attorney fees to St. Louis University after a finding of non-infringement of the Medtronic Navigation patents. The District Court had denied motions of Summary Judgment and Judgment as a Matter of Law (JMOL) filed by St. Louis University. The CAFC found that the conduct of Medtronic Navigation and their attorneys did not rise to the level that justified sanctions.

In Alza Corp. v. Andrx Pharmaceuticals, LLC, the CAFC reviewed the finding that claim 1 in Alza’s patent was invalid due to lack of enablement. The CAFC upheld the decision of the lower court, and the opinion underscores the difficulties in the enablement, or lack of enablement argument. Although “non-osmotic dosage forms” were known in the art, the court finds that “non-osmotic dosage forms with ascending release,” the claimed feature, were not clearly known in the art and needed description in the patent application.

In Bradford Co. v. Conteyor North America, at issue was the determination of the priority date of one of Bradford’s patents. The CAFC upheld the lower court decision that the ‘096 could not claim priority of the ‘119 patent, since, although figures in the ‘119 patent provided support for the claimed features in the ‘096 patent, the applicant had indicated otherwise to the Examiner during prosecution of the ‘096 patent. The Bradford opinion applies prosecution history estoppel, that is, preventing recovery of that which the applicant has given up during prosecution of the patent, to the determination of whether an application can claim priority of an earlier application (the claiming of priority makes the application immune to references whose effective date is after the date of the earlier application).

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