Cross-appeals from the jury verdict and Judge Fenner’s findings that Visicu’s patents are invalid and not infringed, but also that they are not unenforceable due to inequitable conduct during prosecution.  The patents, 6,804,656 and 7,256,708, are generally directed to a system for monitoring patient vital signs from the ICU and sending remote pages or alerts to physicians or others.  Cerner offers a virtual ICU system that was accused of infringing.  Visicu is a competitor and is owned by Philips.The jury verdict of no infringement and invalidity (§ 103) came down in December 2009.  Judge Fenner’s inequitable conduct decision just arrived in January 2011, setting the stage for the appeal.
2011-1209 Jury Verdict
2011-1209 Ineq Conduct Order

2010-1119 Ohio Willow v. Thermo-Ply

Patentee American Willow appeals from the summary judgment order of Judge Ron Clark finding the asserted claims of 7,291,182 invalid under §§ 102 and 103.  The '182 patent generally is directed at a coated fabric liner for prosthetics. 

The case also involved an intervenor seeking to be added as an inventor (denied), and Thermo-Ply's motion to add Walker Process counterclaims based on fraud before the PTO (denied).  The case was recently covered by Michael Smith over at EDTexweblog.

Judge Clark ultimately finds nearly 50 claims from the '182 invalid as obvious in light of a prior art product called the "Silosheath" (which, as is clear from the name, is a tube-sock shaped cloth that fits over an amputee's silo a/k/a stump or, as the court occasionally refers to it, the residuum), U.S. 4,923,474 ("the Klasson patent), and the common sense and knowledge of one of ordinary skill in the art.

A representative claim from the '182 patent is claim 1:

A cushion liner for enclosing an amputation stump, said liner comprising a fabric covering having an open end for introduction of said stump and a closed end opposite said open end, said fabric coated seamlessly on only an inside surface thereof with a polymeric cushioning gel that substantially conforms to the shape of said amputation stump when said liner is worn; wherein said liner is configured such that said polymeric cushioning gel is in contact with the skin of said amputation stump when said liner is worn by a user thereof.

The rest of the claims specified details relating to the fabric, gel, etc.

Essentially, the court found that using a liner with gel cushioning was well known in the art, and all the details claimed by the '182 patent were already known or were obvious to try. 

As a threshold issue, he rejects Ohio Willow's initial effort to distinguish the Silosheath because it is a "sheath" while the '182 claims a "cushion liner."  After noting that the Silosheath was cited to the PTO during prosecution and admitted as prior art, the court concluded:

[M]erely assigning a new name to an invention does not distinguish it from the prior art.

Order, p. 6.  Once the Silosheath is considered, Judge Clark's analysis is relatively straight forward. 

After running though the claims, the court also dispenses with the secondary considerations.  While acknowledging the commercial success that the embodiment of the '182 patent has enjoyed, the court downplays that factor and references the recent Ritchie decision from the Federal Circuit:

“[t]he commercial success of a product can have many causes unrelated to patentable inventiveness; for example, the commercial success of an “invention” might be due not to the invention itself but to skillful marketing of the product embodying the invention.” Ritchie v. Vast Resources, Inc., 563 F.3d 1334, 1336 (Fed. Cir. 2009).  Commercial success is insufficient to overcome the obviousness challenge when the inventions are “modest, routine, everyday, incremental improvements of an existing product or process that confer commercial value (otherwise they would not be undertaken) but do not involve sufficient inventiveness to merit patent protection.” Id. at 1337. 

Order, p. 18.  The court concluded:

“a strong prima facie obviousness showing may stand even in the face of considerable evidence of secondary considerations.” Rothman v. Target Corp., 556 F.3d 1310, 1322 (Fed. Cir. 2009); see also Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).

Order, p. 19.

2010-1119 SJ Order

2009-1098 Horizon Hobby v. Ripmax

Patentee Ripmax appeals from the order and judgment of Judge Michael McCuskey confirming the jury verdict that the asserted claims of 6,983,128 were invalid as anticipated and obvious.  The patent relates to a radio control system for model cars, boats, airplanes, etc.  The case also involved claims of infringement, but those apparently were not tried and dropped before trial, although it is not clear from the docket what happened to them.

The Court's JMOL order does not yield much insight into or detail of the key issues to be argued on appeal, but the Court did specifically find that Horizon's expert performed better than Ripmax's at trial, and therefore the jury could properly find Horizon's evidence of invalidity sufficient and compelling.  The Court also noted that some of Ripmax's JMOL argument was premised on its expert's report rather than his actual testimony.

Horizon has also cross-appealed as the Court only partially granted its motion for costs.

2010-1098 JMOL Opinion

2009-1097 Alcon Inc. v. Teva Pharmaceuticals

Defendant Teva appeals from the verdict following a bench trial before Judge Sue Robinson finding that its ANDA to market a generic version of VIGAMOX, a topical ophthalmic solution comprising the active ingredient moxifloxacin hydrochloride, infringes 6,716,830 and that the claims are valid.

A nice summary of the Court's opinion was written up by Andrew Russell over at Delaware IP Law Blog (here).  The Court rejected Teva's claim construction and invalidity arguments.

While the patent claims explicitly referred to moxifloxacin as the active ingredient, Teva argued that the patentee had redefined the term to mean something other than the plain meaning to one of skill in the art.  The Court found that argument unpersuasive and at odds with portions of the specification.  Opinion, pp. 18-21.

The Court also rejected several invalidity arguments, including anticipation.  A prior patent had disclosed a solution with a moxifloxacin concentration of "0.5 to 99.5 wt%," while the ‘830 patent claimed a concentration range of “0.1 to 1.0 wt%.”  Despite the overlap in ranges, the Court found that "range disparity" did not result in anticipation.  Id. at 23-26.  The Court also rejected related obviousness challenges.

2010-1097 Opinion

2009-1151 Geo Martin v. Alliance Machine

Plaintiff Martin appeals the grant by Judge William Alsup of defendant's Rule 50 motion finding 6,655,566 invalid as obvious.  The ruling comes after a 2 week jury trial resulted in a hung jury.  The court employed KSR and found the patent, directed to a bundle breaker for breaking corrugated cardboard, roofing shingles, etc., merely an obvious combination of known elements performing known functions.  Although there was some evidence of nonobviousness in the secondary considerations, the court dismissed these as minor or inconsequential.

More reading: Order

Counsel:

Geo Martin Co: Krieg Keller Sloan Reilley & Roman (San Francisco)
Alliance Machine: Dorsey & Whitney (Minneapolis)

2009-1031 Marrin v. Griffin

Patentees' Jeff and Claudia Griffin appeal from Judge George Wu's grant of summary judgment finding claims 1-4 of their 5,154,448 patent invalid under 102 and 103.  The patent relates to a label that allows users to write without using a pen or the like–Marrin is the founder of Etch-It, a company that makes cups and other products with a label on which you can write using your finger.

In this case involving the Griffins I almost went with a photo from Family Guy–e.g.,  Brian scratching something–but I could use a Family Guy shot every day (hmm, now there is a theme for next week).  But how often can you use John Waters, a fellow film maker whose early 1980's Polyester had scratch-and-sniff cards and Divine?

Claim 1, the only independent claim, states:

1. A scratch-off label for permitting a user to write thereon without the use of a marking implement, comprising:

a permanent base having a colored near side which is normally visible to the user and having a far side; and

a
coating of scratch-off non-transparent material having a color which
contrasts with the color of the near side of the permanent base, which
coating is applied directly onto the near side of the permanent base
with sufficient thickness so as to obscure the color of the permanent
base, and which when scratched off reveals the color of the near side
of the permanent base.

The court found the claims invalid as obvious and anticipated using several prior art references.  In doing so, however, the court didn't (at least not in its decision) actually read the prior art on the claims–instead, it merely rejects all of the Griffin's arguments and then finds summary judgment essentially uncontested.

The Griffin's tried to use the claim's preamble (about not needing a "marking implement") to differentiate over the prior art.  However, the court found the language not limiting because it was not relied upon for patentability and thus could not now be relied upon to distinguish over the prior art.

Having lost that argument, the Griffin's then lost their expert, whose opinions all required the preamble language to be limiting.  Accordingly, the court found the expert's opinion immaterial.

The court then concludes:

I would have thought that the court should have at least gone through the prior art and identified where in each the claim limitations could be found.

More reading:

Robert Cohn was once middleweight boxing champion of Princeton. Do not
think that I am very much impressed by that as a boxing title, but it
meant a lot to Cohn.

The Sun Also Rises, Ernest Hemingway

2009-1020 Amgen v. Hoffman-La Roche

Roche appeals from the judgment of Judge William Young finding that it infringes U.S. Patent Nos. 5,441,868, 5,547,933, 5,618,698, 5,621,080, 5,756,349,
and 5,955,422 relating to Amgen’s recombinant
erythropoietin (“EPO”).  The Court also entered a permanent injunction.

The Court's Order checks in at 150 pages so, rather than summarizing it myself, I thought I would let the Court do its own
summary.

More reading:

Image from Wikipedia

2008-1590 Randi Black v. Ce Soir Lingerie

Plaintiff Randi Black appeals from the summary judgment decision and order of Judge John Love finding her 7,152,606 patent invalid as obvious.  The patent essentially claims a pad covering at least 1/2 of a breast and tapered in thickness to a relatively thin outer edge that would not be readily noticeable under clothes.  The accused product is the NuBra®, and defendants also include retailers Dillard's, Federated, Victoria's Secret, Gap, Neiman Marcus and Nordstrom.

Claim 1 of the '606 claims:

1. A method of covering a nipple on a human breast, the nipple cover
having a center and comprising a flexible material for conforming to a
human breast, the method comprising the steps of:

placing
the nipple cover directly on a human breast so as to cover at least
about one half and less than all of the breast, with the center of the
cover proximate the nipple;

the
nipple cover having a first thickness proximate the center and a second
thickness proximate a periphery thereof, and the thickness of the
nipple cover gradually tapering from the first thickness to the second
thickness, wherein the method further includes the step of bending the
nipple cover on the breast such that the periphery of the cover blends
smoothly with a curved portion of the breast while concealing a nipple
shape.

The court provides a comprehensive, 30 page opinion analyzing obviousness under the factors of Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), specifically:

1. the scope and content of the prior art;
2. the differences between the claimed invention and the prior art;
3. the level of ordinary skill in the art; and
4. any relevant secondary considerations that give light to the circumstances surrounding the origin of the subject matter sought to be patented, such as commercial success, long-felt but unsolved needs, failures of others, and the presence of lack of motivation to combine or avoid combining in the prior art.

Level of Skill.  The court first determined that the level of ordinary skill in the art was "low," and equivalent to a "backyard inventor"–the subject matter of the patent was merely a method of wearing an article of clothing.

Prior Art.  The court then provides a brief history of the prior art of nipple covers and breast pads (a field described as "broad and highly nuanced"), including patents not cited during prosecution, and concludes that a relatively small number of patents disclose all of the limitations of the '606.

Difference with Prior Art.  The court found these differences "minuscule," noting also that during prosecution the "plaintiff found great difficulty in distinguishing her application from the vast field of prior art."  The one difference that was asserted is, however, found in the uncited prior art.

Secondary Consideration.  The court has a nice discussion on secondary considerations, and particularly on plaintiff's argument that the commercial success of defendants' NuBra supports non-obviousness.  The court criticizes the theory and factual support, finding no nexus between the success of the NuBra and the claimed invention:

More reading:

Ortho-McNeil appeals from the grant of summary judgment to defedants by Judge Dennis Cavanaugh finding that the claims of RE39,221 (formerly 5,336,691) are invalid as obvious.

Ultracet® is a pain relief drug combining tramadol hydrochloride and
acetaminophen in a 1:8.67 ratio by weight.  The claims of the ’221 cover ratios of 1:5 to 1:19.  In a related action (D/NJ 02-5707), Judge Liflind previously found that claim 6 of the ’691–the only claim to make it into the ’221, and covering a ratio of "about 1:5"–was anticipated and obvious. 

The instant decision was nicely covered in The Orange Book Blog.

The so-called Flick patent, 3,652,589, described combining tramadol with other active ingredients, including with an analgesic in a two-agent tablet.  Flick also described a four-agent tablet containing both tramadol and acetaminophen.

Ortho-McNeil argued that Flick didn’t disclose, and taught away from, its claimed two-agent tramadol and acetaminophen combination because the ’589 uses "consisting of" which, in patent-speak, is a closed-ended term conveying limitation and exclusion.  Thus, Ortho-McNeil argued, Flick suggested the combination only in a four-agent combination.  The court disagreed: 

Plaintiff argues that the “consisting of” language contained in the Flick Patent would not instruct a person of ordinary skill in the art to combine only acetaminophen and tramadol into a two-agent tablet. A person of ordinary skill in the art, however, is also a person of “ordinary creativity, not an automaton.” KSR Int’l Co., 127 S. Ct. at 1742.  Here, a person of ordinary skill in the art would not be misled by the “consisting of” language.  One of Plaintiff’s own clinical research fellows, Dr. Minn, stated that he “can’t think of anybody who didn’t think of [combining tramadol with acetaminophen].” (Dep. of Dr. Minn at p. 23, l. 8-11). Additionally, as previously determined by Judge Lifland – and undisputed by Plaintiff – the Flick Patent discloses a pharmaceutical composition of tramadol and acetaminophen in the proportions claimed in the ‘221 patent. See Ortho-McNeil Pharm., Inc. v. Kali Labs., Inc., 482 F. Supp. 2d 478, 523 (D.N.J. 2007).

The court also looked at other references that suggested combining tramadol with acetaminophen, each time teaching or suggesting likely synergistic effects.  The court, citing Judge Lifland, noted that Ortho-McNeil "failed to demonstrate that [Ultracet's] ”synergism is an unexpected result‘" relative to the Flick and other references.

The court also considered, but rejected, Ortho-McNeil’s secondary considerations, finding that, while relevant, were secondary and could not defeat or overcome clear invalidity.

More reading:

Opinion

2008-1511-1514 Therasense v. Becton, Dickson

Plaintiffs Therasense and Abbott appeal from the judgment of Judge William Alsup finding in favor of defendants that (i) claims 1-4 of 5,820,551 (co-owned by Abbott and Therasense) are invalid as obvious and (ii) the ’551 is unenforceable by reason of inequitable conduct.

The ’551 is generally directed to an electrochemical sensor for measuring the amount of glucose in a sample of blood.  It was in prosecution for over 14 years and, on 12 occassions, had claims rejected based on U.S. Patent 4,545,382 and its European counterpart (the ’636)–patents which included some of the same inventors from the ’551.

To overcome the repeated rejections from the PTO based on the ’382 and ’636 patents, one of Abbott’s patent counsel:

struck upon a new point of possible novelty previously overlooked in the pending prosecution. The new point was that the specification disclosed a sensor for use in whole blood without any protective membrane. Trouble was, a passage in the earlier ’382 patent already seemed to disclose membraneless sensors. That passage read (col. 4:63–66):

Optionally, but preferably when being used on live blood, a protective membrane surrounds both the enzyme and the mediator layers, permeable to water and glucose molecules.

To address this problem, Abbott decided to assert, as a matter of extrinsic fact, that in 1983 skilled artisans would have believed that a membrane was essential even in the face of the ’382 disclosure, i.e., they would not have taken the quoted sentence literally.

Abbott proceeded to submit inventor declarations and other material to the PTO, and eventually secured an allowance.

The court reviewed the prosecution history of all of the patents, and concluded that the representations made by Abbott regarding the ’551 were intentionally inconsistent with those made to the EPO regarding the ’636:

The court found the statements were plainly material to the prosecution, and also found an intent to deceive.  Abbott’s prosecuting attorney was permitted to appear at trial and testified, but the court found that he "did not prove to be a convincing witness," describing his explanations as "not plausible" and "not credible."

When, for example, Attorney Pope was shown the EPO appeal language quoting the sentence in question and immediately stating that “[i]t is submitted that this disclosure is unequivocally clear,” he testified that he had understood the “unequivocally clear” characterization to refer only to the last six words of the 26-word sentence — that is, to the concluding phrase “permeable to water and glucose molecules” and not to its other twenty words. Sadly, this order must find that Attorney Pope had no plausible reason for consciously withholding the EPO submissions and that he acted with specific intent to deceive Examiner Shay and the PTO. In making this finding, this Court has taken into account the demeanor of Attorney Pope during his trial testimony.

Attorney Pope testified that his motive was to obtain a strong patent. Therefore, he said he had no motive to conceal and to thus undermine the enforceability of the patent. This argument conveniently overlooks the fact that he consciously chose to withhold. Counsel who steer a course toward obtaining a strong patent should err on the side of disclosure, not nondisclosure. And, it must be said, after so many rejections over so many years, it seems clear that Abbott’s primary goal was to eke out some claim, saving a fight over enforceability for a later day.

Attorney Pope also said that patent prosecutors often write specifications broadly so as to support broad claims, cutting back on their claims as they go along as necessary to avoid the prior art or as is otherwise necessary. Being aware of this alleged practice, he testified that he, therefore, read “optionally, but preferably” as an overblown way for a prior patent prosecutor to have said “optionally, but always.” This is unconvincing. First, there is no authority for this secret-code theory. Words are supposed to mean what they say. Otherwise, our patent-disclosure system would collapse. Second, since the claims of the ’382 covered membraneless sensors used in blood, as both sides agree, the specification must have been sufficient to support the membraneless sensors.

As a result, the court concluded that the ’382 invalidated claims 1-4, and that the omissions and misrepresentations during prosecution of the ’551 rendered the patent unenforceable.

More reading:

Findings and Conclusions