“Attorney argument” and late disclosure not enough to support inequitable conduct findingJune 28, 2007

The Federal Circuit issued a ruling yesterday that provides some guidance on the issues of indefiniteness and inequitable conduct. The court held that the term "near" was sufficiently definite for identifying the location of an incision in veterinary surgery, because the meaning could be adduced from the intrinsic evidence. Further, the court held that as long as the examiner has time to consider a submission, there is no violation of the duty of disclosure, and that attorney argument interpreting a prior art reference was not a material misrepresentation when the prior art reference was before the examiner.More details of Young v. Lumenis, Inc. after the jump.Young patented a method of declawing cats that reduces the occurrence of infection that can occur following the procedure. Specifically, the method called for preserving the skin around the claw before using a laser to remove the claw. The skin was preserved by "making an incision near the edge of the ungual crest of the claw." This process eliminates the need for surgical closure following the surgery and resultant infections. Young learned that a company that sells surgical grade lasers, Lumenis, was teaching a surgical method as part of their sales effort that was allegedly similar to Young's patented approach. Young filed suit.Claim 1 of the patent is representative, with the relevant language emphasized:

A feline onychectomy surgical method using a laser cutting instrument, the method comprising: (a) forming a first circumferential incision in the epidermis near the edge of the ungual crest of the claw, thereby severing at least some of the epidermis from the ungual crest; (b) applying cranial traction to the epidermis severed from the ungual crest to displace the distal edge of the epithelium cranially; (c) incising the extensor tendon near its insertion on the ungual crest; (d) incising the synovium of the PII-PIII joint; (e) applying traction to the claw in the palmar direction for disarticulating the PII-PIII joint; (f) ablating the medial and lateral collateral ligaments; (g) incising the digital flexor tendon; and (h) incising the subcutaneous tissues of the pad of the second phalanx.

After the case was filed, Lumenis requested reexamination of the patent based on two new prior art references, one of which was a textbook that taught a claw removal procedure (the "Fossum Reference"). During reexamination, the examiner believed that a picture in the Fossum Reference showed a cut being made near the ungual crest of the claw. Young's response asserted that the cut was actually at the joint, so it was not "near" the edge of the ungual crest. After further prosecution, the USPTO confirmed the patentability of the claims.Also while the reexamination was taking place, a Markman hearing was held to construe claim terms in the patent. Professor Hedlund, one of the authors of the Fossum Reference, testified at the hearing. In her testimony, she indicated that a cuticle incision was contemplated by the text, but was not shown in the figure identified by the examiner. While Young did not initially submit a transcript of this testimony to the USPTO, Young did submit it between the first and second office actions during the reexamination.The district court eventually held that the patent was unenforceable due to inequitable conduct. Specifically, the district court held that while the Hedlund testimony was disclosed to the examiner, it was only disclosed in response to Lumenis' assertion of inequitable conduct based on the nondisclosure, and so subsequent submission of the testimony to the USPTO could not "cure" the inequitable conduct. Also, the court found that the statements made to the USPTO during reexamination about the Fossum reference were misleading, particularly in light of Hedlund's testimony.The district court also found that use of the term "near" rendered the claims indefinite. Specifically, the court concluded that the term "near" was not sufficient to distinguish the patent from prior art, as the Fossum reference also taught making an incision in the skin around the same area. The Federal Circuit reversed on both issues. First, the court noted that claims are only indefinite if they are "not amenable to construction or are insolubly ambiguous." Here, based on the intrinsic evidence, the Federal Circuit found sufficient information to construe the term "near." The court noted that the ordinary and customary meaning of "near" is "close to or at," and that such a meaning was supported by the specification. As a result, the term "near" was amenable to construction, and therefore not indefinite. The court likewise reversed the finding of inequitable conduct. First, regarding the alleged lateness of the disclosure of the Hedlund testimony, the court noted that "[t]he essence of the duty of disclosure is to get relevant information before an examiner in time for him to act on it." Noting that the submission was five months prior to the date of the second office action, the court determined that the purpose of the requirement was met, and there could be no inequitable conduct based on the alleged late disclosure of that testimony. The court also found that the statements the district court found to be misleading amounted to "attorney argument, attempting to distinguish the claims from the prior art, not gross mischaracterizations or unreasonable interpretations of the Fossum Reference." The Federal Circuit also noted that because the Fossum reference was before the examiner, "the examiner was free to reach his own conclusions and accept or reject Young's arguments." Based on these conclusions, the court reversed the district court's inequitable conduct finding.It will be interesting to see whether framing a statement about a prior art reference as "attorney argument" will be sufficient to stave off a finding of inequitable conduct in future cases.To read the full decision in Young v. Lumenis, Inc., click here.

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