Whether Person of Ordinary Skill Would Add Vent to Disinfecting Cap is Genuine Dispute

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Federal Circuit Review No. 68-01
Whether Person of Ordinary Skill Would Add Vent to Disinfecting Cap is Genuine Dispute

Ivera Medical Corp. v. Hospira, Inc., No. 2014-1613, -1614, 2015 U.S. App. LEXIS 15913 (Fed. Cir. Sep. 8, 2015) (Before Newman, Reyna, and Taranto, J.) (Opinion for the court, Reyna, J.). Click Here for a copy of the opinion.

Ivera Medical Corp. (“Ivera”) sued Hospira for infringement of patents directed to a cleaning device for disinfecting medical implements. The device comprises a cap having openings that permit venting and evaporation of the cleaning agent. On summary judgment, the district court held that the patents were invalid as obvious under 35 U.S.C. § 103. Ivera appealed.

The prior art considered by the district court included Hoang, Chin-Loy, and White. The court found that the references disclosed all the elements of the asserted claims and for the same functions. The court also noted that Hoang’s cap device did not contain the vent limitations. However, given the benefits of adding a vent as taught by Chin-Loy and White, a person of ordinary skill would have been motivated to combine the references to form the claimed invention.

The Federal Circuit disagreed, holding that “record evidence establishe[d] a genuine dispute over whether a person of ordinary skill would have been motivated to add a vent to Hoang’s disinfecting cap.” During summary judgment, Ivera referenced several expert declarations (including the inventor of the Hoang reference) demonstrating that “a person of ordinary skill would have desired fluid-tight disinfecting caps to retain the cleaning agent included within the cap.” In addition, Hospira provided no explanation as to how the blood ports of hemodialysis machines disclosed in Chin-Loy was relevant to disinfecting caps. Therefore, Chin-Loy did not foreclose a genuine dispute over whether a person of ordinary skill would have been motivated to add a vent to Hoang’s cap.

The Court also held that “the tradeoff between the desire to retain cleaning agent and the patents’ disclosure regarding drying is a factual matter left to the factfinder.” The parties also disagreed over the interpretation of certain claim limitations, which was another factual dispute. Because a genuine dispute existed, the district court erred in granting Hospira’s summary judgment of invalidity. Accordingly, the Court reversed and remanded.