In a decision today, the Federal Circuit affirmed a district court's finding of inequitable conduct resulting from Rule 132 declarations that were used to overcome obviousness and anticipation rejections. The declarations used a difference in half-lives to distinguish the claimed composition over the prior art, however, it failed to indicate that the comparative half-lives were calculated using different initial dosages. The court determined that, despite having the underlying raw data before the examiner, the failure to explicitly indicate the difference was sufficient to support the finding of inequitable conduct.

Judge Rader filed a dissent focusing on a resurgence of the inequitable conduct defense and suggested the court revisit and reinvigorate the holding in Kingsdown which stemmed the earlier "plague" of inequitable conduct claims.

More detail of Aventis Pharma S.A. v. Amphastar Pharms., Inc. after the jump.

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In a decision Wednesday, the Federal Circuit affirmed-in-part, vacated-in-part, and reversed-in-part a district court's decision regarding two patents.  The district court held the broadest claims of both patents invalid and not infringed, and dismissed claims of inequitable conduct relating to the patents.

The Federal Circuit affirmed with respect to one patent, but vacated and reversed with respect to the other.  Regarding the first patent, the court held there was no genuine issue of material fact that a product embodying all the claim limitations was in public use before the critical date.  There was also no genuine issue of material fact that the defendants were licensed under the patent, as the license grant was not limited to use with the plaintiff's products.

With regard to the second patent, however, the court held the defendant's motion for summary judgment of invalidity was not properly supported, and vacated the finding of invalidity.  Further, there were insufficient findings in the district court's summary judgment order to support a finding of noninfringement of the second patent.  The court also reinstated the defendant's claims of inequitable conduct, as not all claims of the patents had been found invalid, making an additional finding of unenforceability not moot.

More detail of Zenith Electronics Corp. v. PDI Commc'n Sys., Inc. after the jump.

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In a decision Tuesday, the Federal Circuit affirmed the denial of a preliminary injunction seeking to prevent a patentee from representing to the defendant's customers that the defendant's product potentially infringed the plaintiff's patent.  The patent at issue had a lengthy and complicated prosecution history that included an interference proceeding.  In that proceeding, the BPAI ruled another party properly had priority in the invention.  The patentee filed an action pursuant to § 146, and the parties eventually settled, with the party that prevailed at the BPAI conceding priority and receiving a license under the patent.  In another proceeding in which the patentee was not a party, a district court held that the patentee had abandoned, suppressed, or concealed his invention.

The defendant argued that because of the issues relating to priority and abandonment, suppression, and concealment (as well as inequitable conduct issues), the plaintiff's assertions of infringement were in bad faith, and sought an injunction to prevent the plaintiff from representing to the defendant's customers that its products potentially infringed.  The district court rejected this, finding the four-factor test did not warrant an injunction.

The Federal Circuit affirmed, finding the action not objectively unreasonable, as the case was not so clear-cut to make the district court's decision an abuse of discretion.  However, while the court noted the defendant's chances on appeal were "slim," the appeal was not "clearly hopeless," and declined to award the plaintiff its fees for the appeal.

More detail of Judkins v. HT Window Fashion Corp. after the jump.

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In a decision last week, the Federal Circuit affirmed a district court's permanent injunction against a defendant to prevent infringement of a patent.  The district court held the patent not invalid and infringed, based in part on a claim construction that construed the word "and" to mean "or."  Specifically, based on the specification and other claims, the court determined such a construction was consistent with the intrinsic evidence.  The court also rejected each of the defendant's affirmative defenses.

The Federal Circuit affirmed.  Turning first to claim construction, the court held "and" can be interpreted to mean "or" in claim language when the specification warrants that construction.  In this case, interpreting "and" as requiring both elements would have rendered some dependent claims meaningless, as well as excluded the preferred embodiment from the claims.  The court also affirmed the rejection of the affirmative defenses of inequitable conduct, obviousness, enablement.  Notably, in discussing the obviousness issue, the court stated:  "a flexible TSM test remains the primary guarantor against a non-statutory hindsight analysis such as occurred in this case."  It will be interesting to see whether the non-TSM grounds for an obviousness rejection outlined in the USPTO's examination guidelines will survive scrutiny by the Federal Circuit.

More detail of Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc. after the jump.

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In a decision last week, the Federal Circuit construed the scope of § 121's allowances for subsequent patent applications directed toward nonelected inventions in response to a restriction requirement.  There were three patents at issue, one directed to pharmaceutical compounds, one to compositions containing those compounds, and a third covering methods of suing the compounds.  The method of use patent was derived from a continuation-in-part application filed after a restriction requirement in the original application.  The district court held that notwithstanding how the application was styled, it was entitled to the original application's priority date.

The Federal Circuit disagreed, holding that § 121, by its terms, is limited to divisional applications.  As a result, the method of use patent was not entitled to the earlier filing date, and was invalid for obviousness-type double patenting based on the composition patent.  The court affirmed the district court's findings that the best mode requirement was not violated and that no inequitable conduct had occurred.

More detail of Pfizer, Inc. v. Teva Pharms. USA, Inc. after the jump.

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In a decision Friday, the Federal Circuit affirmed a district court's finding of inequitable conduct based on nondisclosure of details of a poster presentation presented at a scientific conference.  While the patentee disclosed the abstract during prosecution of the patents-in-suit, notes taken by one of the patentee's employees with much more detail of what was actually presented at the conference were not.  The court affirmed the conclusion that these notes were highly material, because they directly contradicted statements made by the patentee during prosecution in support of patentability.

The court also affirmed the finding of intent to deceive.  The notes had been widely circulated among the patentee's scientists working in the field of the invention, and the prosecuting attorney was aware of them.  The attorney stated that while he was aware of the notes, he did not know or understand the contents of the notes, even though he discussed them with the employee who took the notes.  The district court found this statement not credible, and the Federal Circuit found no clear error.  As a result, the finding of inequitable conduct, and therefore unenforceability, was affirmed.

There were three related patents also at issue, and the court likewise affirmed the holding of unenforceability as to those patents.  Although the patentee dismissed its infringement claims under those patents with prejudice and offered a covenant not to sue after the first appeal in this case, the court held that because the alleged infringer maintained its claim for attorney fees under § 285, the issue of inequitable conduct was still within the district court's subject matter jurisdiction.  As a finding of inequitable conduct necessarily results in unenforceability of the patents, the court affirmed the unenforceability of the three related patents.

More detail of Monsanto Co. v. Bayer Bioscience N.V. after the jump.

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In a recent decision, the Federal Circuit affirmed a finding of infringement of a patent relating to the detection and classification of Hepatitis C Virus, but remanded the case for a determination of anticipation. 

In arguably the most interesting aspect of the decision, the court vacated the permanent injunction entered against the defendant.  The plaintiff asked for and was awarded damages to compensate for the amount the defendant would have had to pay the plaintiff for a "market entry fee."  As a result, the court reasoned the plaintiff could not assert that it would be irreparably harmed by future sales by the defendant, having already been compensated for the harm caused by the defendant's entry to the market.  The court therefore instructed the district court on remand to determine the amount of royalty due on the defendant's compulsory license under the patent going forward.

The court briefly mentioned the issue of willful infringement after In re Seagate Technology, LLC, but only noted that there was no evidence of objective recklessness by the defendant and therefore the finding of no willful infringement was appropriate.  The court also gave a reminder to parties and lawyers of the potential consequences when being too cavalier toward obligations under the Federal Rules of Civil Procedure.  As explained in the court's footnote 4:

This case aptly demonstrates the pitfalls of playing fast and loose with rules of discovery. Conclusory expert reports, eleventh hour disclosures, and attempts to proffer expert testimony without compliance with Rule 26 violate both the rules and principles of discovery, and the obligations lawyers have to the court. Exclusion and forfeiture are appropriate consequences to avoid repeated occurrences of such manipulation of the litigation process.

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In a decision yesterday, the Federal Circuit affirmed a district court's judgment of patent unenforceability as a result of inequitable conduct on behalf of the applicant.  The court affirmed that five different actions on the part of the patentee constituted inequitable conduct:

1.    Failure to identify the association between the applicant and the individual providing a Rule 132 affidavit during prosecution
2.    Incorrect payment of small entity maintenance fees after the patents were licensed to a large entity
3.    Intentionally misclaiming an earlier effective priority date
4.    Failing to disclose ongoing litigation of various patents to the USPTO
5.    Failing to disclose relevant prior art

The court provides a reminder to all applicants and attorneys the duty of candor, good faith, and honesty is required.  Also, the court noted that this applicant prosecuted these patents pro se, and the court noted that while the inventor frequently has superior knowledge regarding the technical aspects of the invention, prosecuting patents "requires both technical and legal credentials" to be effective.

More detail of Nilssen v. Osram Sylvania, Inc. after the jump.

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The Federal Circuit today addressed whether a prosecuting attorney who was found to have committed inequitable conduct during an infringement suit of the patent prosecuted may intervene to contest the finding.  The court held that when an attorney is merely criticized by the court, not formally reprimanded, they have no standing to appeal.  As a result, the court affirmed the district court's decision denying the prosecuting attorney's motion to intervene in the infringement action.  

More detail of Nisus Corp. v. Perma-Chink Sys., Inc. after the jump.

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It's been a rough week for Qualcomm.  On Monday, the Bush administration let stand the ITC ruling barring import of mobile phones using certain Qualcomm chips unless a license fee is paid to Broadcom, a competing company who holds patents covering the power management technology used in the chips. 

Also Monday, a federal judge in California found that Qualcomm had committed serious litigation misconduct in a second patent case against Broadcom, and ordered Qualcomm to pay all of Broadcom's attorney fees, costs, and expenses incurred in defending the suit, which could amount to roughly $10 million.

Details about the judge's findings and Qualcomm's apparent actions after the jump.

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