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« Dey Pharma, LP v. Sunovion Pharmaceuticals Inc. (Fed. Cir. 2012) | Main | Court Report - Part II »

April 17, 2012



First, the "intervening rights" statute is 35 USC 252 (the reissue statute)

Second, it was a majority of 6-4 on the "interveing rights" issue. The plurality (5-5) was on the meaning of "biocompatible."

Third, the majority interprets correctly 35 USC 307(b) that the reexam claim at issue must be "amended or new" for "intervening rights" to apply. This is a straightforward and unambiguous interpretation of 35 USC 307(b). Statements in reexam may be relevant to claim scope for infringement purposes, but not for "intervening rights."

Fourth, the dissent interprets 35 USC 252 and 35 USC 307(b) in the reverse and wrong order. the application of “intervening rights” in reexaminations is essentially a “two step” process: (1) you first see if the reexamined claims are “amended or new,” and only if those claims are “amended or new,” do you then (2) determine whether the “amended or new” claims are “substantially identical” to the respective original claims. As the majority opinion correctly observed, once you determine that asserted claims are not “amended or new” in the first step, there’s no need to proceed to the second step. All of dissent’s sound and bluster to the contrary about the “original” and “new” claims not being “substantially identical” is legally irrelevant. In fact, the dissent is improperly conflating the the “amended or new claim” language of the reexam statute with the “substantially identical” language in the reissue statute.

Fifth, the dissent's position is based upon an analogy that is legally flawed. This analogy is based on the doctrines of prosecution history estoppel and disavowal of claim scope, citing the 1996 case of Cole v. Kimberly-Clark Corp. (statements made during reexam to distinguish prior art effectively narrowed the scope of reexamined claims), as well as the more recent 2011 case of American Piledriving Equipment, Inc. v. Geoquip, Inc. (patentee disclaimed claim scope on reexamination by arguing that certain claims should be allowed over the prior art because the claimed “integral” components were comprised of “one piece.”). Not only is this analogy legally flawed, it is unsupported by the cited Cole and American Piledriving Equipment cases.

Sixth, the dissent argues that limiting the term “amended” claim under 35 USC 307(b) to “a situation where the language itself is changed” “ignores the statute’s language, its purposes, and the history of intervening rights.” But dissent's long and convoluted explanation for why the term “amended” means something other than what it plainly says in 35 USC 307(b) doesn’t stand up under scrutiny. One particularly curious statement is that “we must interpret ‘amended’ to effectuate the intent of Congress in enacting the intervening rights provisions of the reexamination statutes.” But what is glaringly “absent” from the dissent's tome on effecting “the intent of Congress” is any citation or reference to the legislative history accompanying the reexam statutes. In fact, dissent's feeble assertion that the reexamination statute doesn’t define the phrase “amended” comes across merely as “grasping at straws,” not logic.

Seventh, I predict SCOTUS won't touch Marine Polymer with a ten foot pole. The factual and legal issues are too messy for them to take the "intervening rights" issue now.

Dear EG:

First, right that's what I said in the post (5th para.)

Second: thanks; hard to know how the court was deciding this (almost like a Supreme Court opinion).

Third, I agree with you but Judge Dyk does not, hence the need for review.

Fourth, again, I agree but the dissenting judges seem to think that this analytical framework provides the opportunity for patentees to manipulate the proceedings unfairly.

Fifth, regardless of the precedential bases for the dissent's opinion I think it is the reasoning that is critical (both for the substantive question and as a matter of philosophy).

Sixth, again this is a question of philosophy as much as it is legislative history so I would interpret the citation to Congressional intent broadly.

Finally, since this is a question of statutory interpretation I would not be so sure the Supreme Court won't weigh in; look at the Hyatt and Caraco decisions.

Thanks for the comments. As you know yesterday was a long day of me.

Marine Polymer Technologies prepared to litigate against new patent infringer Medtrade Products and its U.S. distributors.

Earlier this year Marine Polymer Technologies won its patent infringement case against Hemcon. The enforced patent is U.S. patent 6,864,245 which is directed towards a biocompatible poly-N-acetyl glucosamine polymer (p-GlcNAc) used for treating trauma and other uses, purified from arthropods, fungi, and microalgae. Marine Polymer Technologies is now ready to sue other chitosan hemotat and dressing suppliers that infringe the patent.

Medtrade Products located in the United Kingdom makes chitosan (p-GlcNAc) based hemostats and wound dressings. It has been found the dressings are mainly composed of a mixture of chitosan powder and chitosan salt powder (with the mixture adhered to a backing for some of the products). Testing has shown the chitosan powder (and finished products) are biocompatible resulting in infringement of Marine Polymer Technologies patent.

The products likely to be affected are Medtrade Products Celox and Omni-Stat brands. The dressings are sold for vascular closure, surgery, other hospital uses, trauma, first aid and veterinary by U.S. distributors including Advanced Vascular Dynamics, SAM Medical, Fianchetto, Biostat, and North American Rescue. Medtrade Products Aquanova chitosan dressings may also infringe Marine Polymer Technologies patent but there are currently no known U.S. distributors.

Marine Polymer Technologies were awarded $29 million damages in the Hemcon case. The fact that Medtrade Products is a foreign entity does not bar it from liability under the U.S. patent act. Damages may also be awarded against the U.S. distributors as under section 271(a) of the U.S. Patent Act it is unlawful to make, use, offer to sell, sell or import into the U.S. any device that makes use of a valid patent, without authority from the patent owner. To do so constitutes direct infringement.

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