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February 2007
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Oral Arguments for Leegin Creative Leather Products, Inc. v. PSKS, Inc.

The transcripts for the oral arguments before the U.S. Supreme Court in Leegin Creative Leather Products, Inc. v. PSKS, Inc..

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Pfizer, Inc. v. Apotex, Inc.

Pfizer Inc. filed suit against Apotex, Inc. (formerly known as TorPharm, Inc.) in the United States District Court for the Northern District of Illinois on July 30, 2003, alleging that, pursuant to 21 U.S.C. § 355(j)(5)(B)(iii), Apotex’s filing with the United States Food and Drug Administration (“FDA”) of its Abbreviated New Drug Application (“ANDA”) No. 76-719 seeking approval to commercially sell amlodipine besylate tablets (2.5 mg, 5 mg, and 10 mg strengths) before the expiration of the term of U.S. Patent No. 4,879,303 (“the ’303 patent”) to Pfizer, infringed claims 1-3 of the ’303 patent. The ANDA product sought to be approved by Apotex is a generic version of Pfizer’s amlodipine besylate drug product, which is commercially sold in tablet form in the United States under the trademark Norvasc®. Norvasc® is approved by the FDA for treating hypertension and chronic stable and vasospastic angina. The ’303 patent, entitled “Pharmaceutically Acceptable Salts,” is listed in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations (“Orange Book”) with respect to the Norvasc® drug product in accordance with 21 U.S.C. § 355(b)(1). Apotex certified in ANDA No. 76-719 that it believed the ’303 patent was invalid and unenforceable, and sought approval to market and sell its amlodipine besylate tablets before September 25, 2007 (i.e., the expiration date of the ’303 patent plus an additional six months of pediatric exclusivity) pursuant to 21 C.F.R. § 314.94(a)(12)(i)(A)(4).

In its answer to Pfizer’s complaint, Apotex denied infringement and counterclaimed for declaratory judgments that the claims of the ’303 patent are invalid for anticipation and obviousness, and that the ’303 patent is unenforceable due to Pfizer’s alleged inequitable conduct before the United States Patent and Trademark Office (“USPTO”). Prior to trial, however, Apotex stipulated that its ANDA product contains each limitation of claims 1-3 of the ’303 patent, and that if the ’303 patent were upheld as valid and enforceable, its ANDA product would literally infringe those claims.

Following a bench trial, the district court entered a final judgment on January 29, 2006 for Pfizer and against Apotex on Apotex’s request for declaratory judgments that the claims of the ’303 patent are invalid or unenforceable. Based on the stipulation, the trial court found infringement. The district court then ordered that the effective date of any approval of Apotex’s ANDA No. 76-719 shall not be earlier than September 25, 2007, and enjoined Apotex from making, using, offering to sell, selling, or importing into the United States any product comprising amlodipine besylate covered by (or the use of which is covered by) the claims of the ’303 patent until September 25, 2007. Pfizer Inc. v. Apotex, Inc., No. 03C 5289 (N.D. Ill. Jan. 29, 2006).

Pfizer dismissed its claim of willful infringement against Apotex by a Stipulation and Order dated January 23, 2006. Apotex now appeals from the district court’s final judgment, challenging the rulings as to validity and enforceability. Because the district court erred in holding that the subject matter of claims 1-3 of the ’303 patent would not have been obvious, we reverse. We therefore do not address Apotex’s assertion that it had proven that Pfizer engaged in inequitable conduct before the USPTO during prosecution of the ’303 patent.

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Liebel-Flarsheim Co. v. Medrad, Inc.

Liebel-Flarsheim Company and Mallinckrodt Inc. (collectively “Liebel”) appeal from the decision of the United States District Court for the Southern District of Ohio granting Medrad’s motion for summary judgment that four of Liebel’s patents are invalid under 35 U.S.C. §§ 112 and 102. Liebel-Flarsheim Co. v. Medrad, Inc., No. 01-CV-98-858 (S.D. Ohio Oct. 28, 2005). Medrad cross-appeals from the decision of the district court granting Liebel’s motion for summary judgment that Medrad infringed the asserted patents and that the inventorship designation on Liebel’s patents is correct. Medrad
also cross-appeals from the holding that the inequitable conduct counterclaim was moot in light of the district court’s invalidity rulings. Because we conclude that Liebel’s patents are invalid, the front-loading patents for lack of enablement and the syringe-sensing patents on anticipation, we affirm the district court’s judgment of invalidity. As a result, the cross-appeals on infringement and inventorship need not be reached. We also affirm the court’s decision that the inequitable conduct counterclaim is presently moot.

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eSpeed, Inc. v. BrokerTec USA, L.L.C.

Plaintiffs-appellants eSpeed, Inc., Cantor Fitzgerald, L.P., CFPH, L.L.C. and eSpeed Government Securities, Inc. (collectively Cantor) appeal from the district court’s final judgment declaring claims 20-23 of United States Patent No. 6,560,580 (the ’580 patent) invalid, declaring the ’580 patent unenforceable, and entering final judgment in favor of defendants. Because we affirm the district court’s conclusion that the ’580 patent is unenforceable due to inequitable conduct, we need not decide the other issues raised by Cantor.

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Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc.

This case is the second appeal to this court in a patent litigation between Cross Medical Products, Inc. (Cross Medical) and Medtronic Sofamor Danek, Inc. (Medtronic). Cross Medical accuses Medtronic's polyaxial screws of infringing U.S. Patent No. 5,474,555 (the '555 patent). In the prior appeal, this court set aside a permanent injunction issued by the United States District Court for the Central District of California and reversed the summary judgment of infringement and validity of claim 5 of the '555 patent in favor of Cross Medical. See Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir. 2005) (First Appeal). In this appeal, the district court issued another permanent injunction after Medtronic redesigned its polyaxial screws in an attempt to avoid the '555 patent. Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., SA CV 03-110-GLT, slip op. at 2 (C.D. Cal. April 8, 2005) (Trial Court Opinion). The court determined that claim 5 of the '555 patent was infringed under the doctrine of equivalents by Medtronic's redesigned screws, but that claim 7 of the '555 patent was not infringed by either the original or redesigned screws. Id., slip op. at 14, 20. Notably, the district court did not have the benefit of this court’s opinion in the First Appeal before issuing the second permanent injunction.

Because Medtronic's redesigned polyaxial screws do not infringe the asserted claims literally or under the doctrine of equivalents, this court reverses the grant of summary judgment of infringement of claim 5. On the redesigned screws, the district court should grant Medtronic's motion for summary judgment of non-infringement. The remaining issues, which involve the validity of claim 7 and infringement of this claim by Medtronic's original polyaxial screws require reconsideration in light of this court's prior opinion in the First Appeal. Accordingly, this court reverses-in-part and vacates-in-part the district court's findings on the remaining issues and remands.

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In re Serenkin

Arnold B. Serenkin (“Serenkin”) appeals from the final decision of the United States Patent and Trademark Office (“PTO”) Board of Patent Appeals and Interferences (“Board”) sustaining the examiner’s rejection of claims 1 to 11 of Reissue Application No. 10/134,550 (“the ’550 reissue application”). Because the Board correctly determined that the error upon which Serenkin bases his reissue application is not correctable error under 35 U.S.C. § 251, we affirm.

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Open Call From the Patent Office

By Alan Sipress

Washington Post Staff Writer
Monday, March 5, 2007; 3:34 PM

 

The government is about to start opening up the process of reviewing patents to the modern font of wisdom: the Internet.

The Patent and Trademark Office is starting a pilot project that will not only post patent applications on the Web and invite comments but also use a community rating system designed to push the most respected comments to the top of the file, for serious consideration by the agency's examiners. A first for the federal government, the system resembles the one used by Wikipedia, the popular user-created online encyclopedia.

"For the first time in history, it allows the patent-office examiners to open up their cubicles and get access to a whole world of technical experts," said David J. Kappos, vice president and assistant general counsel at IBM.

It's quite a switch. For generations, the agency responsible for awarding patents, one of the cornerstones of innovation, has kept its distance from the very technological advances it has made possible. The project, scheduled to begin in the spring, evolved out of a meeting between IBM, the top recipient of U.S. patents for 14 years in a row, and New York Law School Professor Beth Simone Noveck. Noveck called the initiative "revolutionary" and said it will bring about "the first major change to our patent examination system since the 19th century."

Most federal agencies invite interested parties to weigh in on proceedings, and even the patent office allows some public comment, but never to the degree now suggested .

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FirstHealth of the Carolinas, Inc. v. Carefirst of Maryland, Inc.

FirstHealth of the Carolinas, Inc. (“FirstHealth”) appeals from a dismissal by the Trademark Trial and Appeal Board (“Board”) of its counterclaim to cancel trademarks registered by CareFirst of Maryland, Inc. (“CareFirst”). CareFirst of Md., Inc. v. FirstHealth of the Carolinas, Inc., Opposition Nos. 91116355, 91124847 (T.T.A.B. Dec. 2, 2005) (“Dismissal”). Because the Board’s findings are supported by substantial evidence, we affirm.

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Aquatex Indus., Inc. v. Techniche Solutions

This case was previously before us in AquaTex Industries, Inc. v. Techniche Solutions, 419 F.3d 1374 (Fed. Cir. 2005). We held that claims 1 and 9 of U.S. Patent No. 6,371,977 (“the ’977 patent”) were not literally infringed, but we did not foreclose a finding of infringement under the doctrine of equivalents. We remanded for “the trial court [to] consider whether or not each limitation of the claims in dispute, or its equivalent, is present in the accused Techniche products.” Id. at 1383. On remand the district court granted summary judgment of non-infringement, and the plaintiff patent holder AquaTex Industries, Inc. (“AquaTex”) now appeals. We hold that the district court erred in finding the doctrine of equivalents barred by prosecution history estoppel and in relying on unclaimed features to find a lack of equivalents. However, we affirm the grant of summary judgment because AquaTex did not satisfy its burden to present particularized evidence of equivalents in opposition to the motion for summary judgment.

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In re Princo Corp.

This case involves a suit for patent infringement by U.S. Philips Corporation (“Philips”) against Princo Corporation and Princo America Corporation (“Princo”). Princo seeks a writ of mandamus directing the United States District Court for the Southern District of New York to (1) stay the case pursuant to 28 U.S.C. § 1659 (2000) and (2) vacate its order granting Philips’s motion for summary judgment on Princo’s patent misuse defense. We conclude that the district court erred under § 1659 when it did not stay the case until related proceedings before the Commission, including any appeals, become final. We accordingly grant Princo’s petition for a writ of mandamus.

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