Ohio Willow Wood Co. v. Alps South, LLC – Inequitable Conduct Lives!

Posted on November 18, 2013 by Warren Woessner

In October, I spoke at AIPLA with James Carmichael, who used to head up the “Fraud Squad” at the PTO. He noted that there had only been three Fed. Cir. decisions upholding findings of inequitable conduct (IC) since Therasense, two of which involved attorney misconduct. Now there is a fourth. The Fed. Cir. panel of Judges Dyk, Bryson and Reyna vacated and remanded a district court’s finding of no IC, but they wrote at a level of factual detail which virtually instructed the district court to change its mind. (Ohio Willow Wood Co. v. Alps South, LLC, Appeal no. 2012-1642, 2013-1024 (Fed. Cir. November 15, 2013) a copy is available at the end of this post).

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Ariosa Diagnostics v. Sequenom: Another One Bites The Dust

Posted on November 11, 2013 by Warren Woessner

In Ariosa Diagnostics, Inc. v. Sequenom, Inc., 2013 U.S. Dist. LEXUS 156554, the U.S. District Ct. for N.D. Cal., granted summary judgment to Ariosa that the claims of U.S. Patent No. 6,258,540 were invalid as directed to patent-ineligible natural phenomena in combination with conventional sampling and detection techniques. The claim were directed to methods for detecting paternally inherited nucleic acid of fetal origin by amplifying a paternally inherited nucleic acid of fetal origin from a serum or plasma sample from a pregnant female and detecting the presence of this type of “cffDNA”. Claims 21 and25 recite that they are directed to “A method of performing a prenatal diagnosis” by obtaining a non-cellular fraction of the blood sample, amplifying the cffDNA in the fraction, detecting its presence and “providing a diagnosis based on the presence, quantity and/ or sequence of the DNA.”  Some conditions can be diagnosed by just measuring the absolute level of the bffDNA.  No specific diagnostic conclusions were recited in the claims. In fact, during oral argument, Sequenom had admitted: “I don’t disagree that if you go through all the elements in the claim you could put a check as either a conventional item or a natural phenomenon.”

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Sanofi-Aventis v. Pfizer – Possession and Appreciation Trump Structure

Posted on November 6, 2013 by Warren Woessner

On Tuesday, the Fed. Cir. affirmed a finding by the Board that Pfizer was entitled to an earlier priority date for a claim to  cDNA encoding the IL-13 receptor protein (Sanofi-Aventis v. Pfizer, Inc., App. No. 2012-1345 (Fed. Cir. November 5, 2013). (A copy can be found at the end of this post.) Pfizer was the junior party in a pre-AIA interference, and was required to show conception plus reduction to practice prior to Sanofi’s filing date.  While both applications demonstrated physical possession of the sequent and, in fact, contained the correct sequence, Pfizer argued that it was entitled to an earlier date of invention based on its actual possession of the cDNA combined with a sequence “only” containing eight errors in an 1135 nucleotide sequence.

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Synthes v. Spinal Kinetics – When “Structure” is Not Enough

Posted on November 4, 2013 by Warren Woessner

 

A guest post from Domenico Ippolito of Schwegman Lundberg & Woessner, P.A.

Synthes USA, LLC v. Spinal Kinetics, Inc., 2013-1047, -1059, (Fed.Cir. Oct 29, 2013) concerns a medical device patent, but addresses issues common to all patents.  The primary issue was whether Synthes’ claims on a synthetic intervertebral implant (i.e., a spinal disc) were supported by a sufficient written description.  The question had been submitted to a jury, which determined that the written description requirement was not met.  The patentee requested JMOL from the district court judge (Judge Whyte, of the Northern District of California), but the court found substantial evidence supporting the jury’s decision.  The basis of the court’s opinion was that the patent described only a system in which the center layer of the disc was attached to the outer layers via “grooves” penetrating from the circumference of the outer layers, but the claims were directed to “openings.”  Thus, a reasonable jury could find that the claims directed to openings lacked adequate support.

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