Federal Circuit Review – Issue 1 – 11-21-2013

Each week in the Federal Circuit Review, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide.

– Joe Robinson and Bob Schaffer

 

tsfedcirreviewNewsletterWithSummary

 

Failure to Submit Evidence Tending to Corroborate Invalidity Raises Genuine Issue of Fact on Summary Judgment for Inequitable Conduct

 Ohio Willow Wood Co. v. Alps South, LLC, Nos. 2012-1642, 2013-1024, 2013 U.S. App. LEXIS 23062 (Fed. Cir. Nov. 15, 2013) (Reyna, J.). Click here for a copy of the opinion.

The Ohio Willow Wood Company sued Alps South, LLC for infringement of a patent directed to cushioning devices for residual stumps of amputated limbs. The district court granted summary judgment on three issues: First, some claims were invalid for obviousness based on the collateral estoppel effect of Ohio’s assertion of a related patent against a third party. Second, some claims were invalid for obviousness. Third, Alps failed to raise a genuine issue of material fact with respect to Ohio’s supposed inequitable conduct during an ex parte reexamination of the patent in suit.

The Federal Circuit affirmed on invalidity, finding no “patentably significant” distinctions between the claims in suit and those held invalid in the co-pending third-party litigation. Several claims that depended from the invalidated claims contained only obvious numerical limits on certain characteristics of the “gel composition” and the “fabric” of the device

On inequitable conduct, the court held that a reasonable fact finder could conclude Ohio had withheld material information from and made misrepresentations to the PTO during the reexamination.

Alps brought a second reexamination of the patent based on a product called the “Single Socket Gel Liner” (SSGL). Alps submitted a prior art advertisement and testimony from a witness, Mr. Comtesse, purporting to explain that the SSGL product performed in a way that invalidated the claims. The examiner agreed and rejected the claims. Ohio appealed, arguing the rejection improperly relied on uncorroborated testimony of “a highly interested party.” Ohio also denied the existence of evidence that the SSGL product exhibited bleed through of a gel or was made with a Coolmax fabric.

The Federal Circuit concluded there was evidence Ohio withheld information from the PTO that would have corroborated Mr. Comtesse’s testimony. Ohio knew the manufacturer of SSGL had filed a patent application and that Mr. Comtesse reviewed samples of SSGL products, which Ohio had characterized as “ghost[s].” Additionally, Ohio apparently made a material misrepresentation when it said Mr. Comtesse “admits that he is an interested party” and that “he continues to receive royalties” on the SSGL products he helped develop. On the contrary, Mr. Comtesse’s deposition testimony denying his interest directly contradicted Ohios’ representation.

Viewing these omissions and representations together, the court concluded that a jury could infer Ohio had a specific intent to deceive the PTO. Ohio’s counsel knew that Mr. Comtesse’s testimony was vital to invalidating its patent during reexamination, and sought to discredit him. Accordingly, the court reversed the district court’s grant of summary judgment and remanded the inequitable conduct issue for trial.

The Author

Robert Schaffer & Joseph Robinson

Robert Schaffer & Joseph Robinson  

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently No Comments comments.