District of Massachusetts IP Blog

Stelara Patent Suit Ready For Trial

In a long standing dispute, Abbott and Centocor have been fighting over rights to antibody technology for treating psoriasis.  Abbott won an interference before the BPAI and sued Centocor for infringement by Centocor’s Stelara drug.  Centocor sought judicial review of the BPAI decision (originally in DC before being transferred here) and the parties filed a combined twelve motions for summary judgment in the D. Mass. suit.  In an omnibus opinion, Judge Saylor decided the universally relevant issues as follows:

ARMS Case Sent Back to Judge Saris

The various ARMS cases have been mentioned several times in this blog.  One of them went up to the Federal Circuit, which just issued its decision.  In it the Federal Circuit affirmed Judge Saris’ invalidation of ARMS’ Reissue Patent No. 39,465 (directed to a firearm handguard) for failing to meet the written description requirement, but it also vacated a million dollar jury verdict because of a potential jury taint issue.  The appeals court’s logic was as follows: 

Headset Issues Pared Down For Trial

In one of their many disputes (see here for further details) Bose sued Lightspeed for infringement of Patent No. 5,181,252 directed to drivers in noise cancelling headsets.  After Judge Young construed the disputed limitations both parties moved for summary judgment on various grounds.  Judge Young’s decision on those motions can be found here.

 

In view of the claim construction, Lightspeed conceded infringement of claim 1.  As to anticipation, the court granted summary judgment for Bose that a first piece of prior art did not anticipate the patent.  But the court did rule that a second piece of art met all the limitations of claim 1 and left for trial the question of whether that art was properly prior art for purposes of § 102(a) (known or used by others) or 102(g)(2) (made by another). 

 

Lightspeed also moved for invalidity under § 112 for lack of enablement, improper written description, or indefiniteness.  But that motion was denied because § 112 relies on an understanding of one skilled in the art and Lightspeed advanced no evidence on that point.

 

Bose Corp. v. Lightspeed Aviation, Inc., 09-10222-WGY (D. Mass. July 30, 2010)

Air Filter Patentee Successful On Summary Judgment

Plaintiff JCS (successor in interest to the original Holmes Group plaintiff) asserts infringement of Patent Nos. 6,425,932, 6,685,760, 7,041,147, and 7,276,100, directed to various configurations of replaceable air filters, against defendant RPS Products.  The latter three patents are all continuations of the ‘932 patent and were added to this case at various stages.  In particular the ‘147 claims appear to have been drafted with accused products in hand.

 

In a comprehensive decision on a number of issues, Judge Saylor effectively sides for the plaintiff across the board.

 

Infringement

 

The parties cross-moved for summary judgment on infringement, which required the court to construe new claim terms in the ‘147 patent.  The court favored plaintiff’s construction (relying partially on the doctrine of claim differentiation, validating at least one of plaintiff’s strategies in prosecuting the continuation).  Having sided with the plaintiff on claim construction, and with no dispute as to the operation of the accused products (the filters are what they are), the court entered summary judgment of literal infringement (and declined to address infringement under DOE).

 

Inequitable Conduct

 

Defendant alleged inequitable conduct by the plaintiff when it failed to disclose this litigation and certain happenings (including certain court orders) during prosecution of the ‘147 patent.  Cross motions for summary judgment were denied due to questions of fact both on materiality (whether the litigation happenings were material is not clear cut) and intent (a classic trial issue, the level of which to prove inequitable conduct depends on materiality)

 

Judge Saylor denied a motion to strike defendant’s proposed inequitable conduct expert’s testimony on materiality, but granted it regarding her testimony on intent or as to the ultimate legal question of whether plaintiff engaged in inequitable conduct.  A motion to preclude the testimony of the prosecuting attorneys due to late disclosure / conflicting invocation of the attorney-client privilege was denied.

 

Assorted Defenses

 

Plaintiff moved for summary judgment on a number of defenses.  The court granted summary judgment on the prosecution laches defense (five to seven years between initial filing and continuation filing was not excessive), written description defense (the original and common specification sufficiently disclosed a one-leg embodiment to satisfy § 112 for the corresponding claims in the continuation), obviousness (defendant failed to articulate a level of ordinary skill in the art and failed to make a case that the invention would have been obvious to one possessing such skill), indefiniteness (the court had no problem with the term “perimeter”), and statutory-double patenting (the asserted patents differ in scope).

 

The court denied summary judgment on obviousness-type double patenting since it wasn’t clear whether a terminal disclaimer was properly filed.

 

Damages

 

The court declined to strike plaintiff’s claim to damages due to discovery abuses (including failure to provide a computation of damages in plaintiff’s initial disclosures and failure to supplement the same) but it did suggest that the defendant propose an alternate sanction, such as a limited award of fees and costs. 

 

Download Judge Saylor decision

 

The Holmes Group v. RPS Prods., Inc., 03-40146-FDS (D. Mass. June 25, 2010)

Emphasis on Trade Secrets Defeats Patent Infringement Claim

This case is an excellent example of the tension between the disclosure requirements of the patent laws and the desire to keep something as a trade secret.  Also, it feels like A.R.M.S. week here at the D. Mass. IP blog (see here, here, and here).

 

This latest opinion deals with Atlantic Research Marketing Systems’ claims against Troy Industries for infringement of Patent No. 6,499,245, reissued as RE39,465, directed to a modular sleeve yoke.  The parties cross moved for summary judgment, A.R.M.S. seeking SJ of infringement, Troy seeking SJ of invalidity.  Judge Saris ruled that the patent was invalid for failing to meet the written description and best mode requirements.

 

The asserted claims described a firearm handguard attached solely to the barrel nut.  This configuration was also the best mode of practicing the invention.  But the specification only disclosed embodiments which showed the handguard attached to both the barrel nut and to a receiver sleeve.  A.R.M.S. was treating the barrel nut only embodiment as a trade secret and it didn’t make it into the specification.  But the patent laws require a written description of claimed inventions as well as disclosure of the best mode.  Those were absent here because the specification didn’t show the single attachment embodiment.  An A.R.M.S. witness at trial even admitted as much. 

 

A.R.M.S.’ trade secret briefing also appeared to have hurt its patent case.  At one point A.R.M.S. appears to have suggested that the trade secret was only lost upon issuance of the ‘465 reissue patent rather than with the original ‘245 patent, despite identical specifications.  If that’s the case, then the trade secret embodiment must not have been in the specification, therefore violating the written description and best mode requirements.

 

Atlantic Research Marketing Systems, Inc. v. Troy Industries, Inc., 07-11576-PBS (D. Mass. May 14, 2010)

 

Federal Circuit Confirms Written Description Requirement

Ariad v. Eli Lilly is a case that has garnered much attention in the patent law community, but it is also a case that originated D. Mass., as have many high profile Federal Circuit cases over the years.  Originally before Judge Zobel, the case was heard en banc by the Federal Circuit, who issued its opinion today.  The en banc court confirmed that 35 USC § 112, ¶ 1 contains a written description requirement separate from the enablement requirement.  Today’s decision follows the original panel decision, reversing Judge Zobel’s denial of JMOL and holding the asserted genus claims of Patent No. 6,410,516 invalid for failure to meet the statutory written description requirement.

 

For an excellent take on how the written description and enablement requirements work together to preclude patenting of basic scientific research, I recommend Judge Newman’s short “additional views” which follow the majority opinion.

 

http://www.cafc.uscourts.gov/opinions/08-1248.pdf

 

Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 2008-1248 (Fed. Cir., Mar. 22, 2010)