Scott Daniels | April 21, 2010

(1) Expert May not Refer to Pending Reexamination

Judge William Young ruled in NewRiver, Inc. v. Newkirk Products, Inc. (D. Mass., Case No. 1:06-cv-12146), that neither the witnesses nor the lawyers were allowed to mention, in the presence of the jury, a pending reexamination initiated by Defendant Newkirk.  Even so, an expert witness for Newkirk did so, and Plaintiff NewRiver moved for a new trial, arguing that its patent’s presumption of validity had been undermined.

Judge Young disagreed, explaining that any prejudice was prevented by his instructions to the jury that the reexamination was separate from the trial, that the patent was presumed valid, and that Defendant bore the burden of proving invalidity by clear and convincing evidence.

It is paradoxical that patentees, who have always emphasized to juries the importance of the examiner’s allowance of claims during original prosecution, are so resistant to any mention at trial of the examiner’s actions in reexamination.  The claims of the patent in NewRiver had been rejected by the examiner at the time of trial and are now under final rejection.

(2) Reexamination Grant Affects Willfulness Issue

The relationship of reexamination and willful infringement arose in a transfer order in Boston Scientific v. Cordis, 2010 U.S. Dist. LEXIS 38013 (D. Minn. April 16, 2010).

Defendant Cordis moved that the case be transferred from Minnesota to Judge Sue Robinson in Delaware – she had found infringement in an earlier case involving the same patent, the same product, and the same parties.   Boston Scientific opposed transfer, asserting that the only remaining issues of willfulness and damages could be as easily tried in Minnesota as before Judge Robinson.  Cordis replied that it would rely on the PTO’s grant of reexamination as a defense to Boston Scientific’s allegation that the infringement was willful and that the issue would be better resolved in Delaware.

Judge Patrick Schlitz agreed to the transfer: “[g]iven the central importance of the willfulness issue in this case and Judge Robinson’s extensive experience with the [patent and the accused product], the Court finds that transfer is appropriate… .”

Judge Schlitz added that the “strength of Cordis’ defense [presumably, the strength of its reexamination arguments] is relevant both to whether this case should be stayed pending reexamination and to the propriety of preliminary injunctive relief (which Boston Scientific insists it may seek).”  2010 U.S. Dist. LEXIS 38013, at *2.

(3) Board Reverses Rejection of Claims for Making Anti-Inflammatory

The PTO BPAI has reversed the examiner’s rejection of claims in the reexamination of U.S. Patent No. 6,797,286.  Those claims are for a method of making an anti-inflammatory, “non-immuno stimulating” composition from Uncaria, commonly known as “Cat’s Claw.”  The Board found that there would be no reason for one skilled in the art to modify the disclosure of the primary reference to include a solvent treatment as required by the ‘286 claims.

The case is significant in that it appears to be a change in the Board’s record of treating appeals from reexamination proceedings – specifically, the Board appears to be more inclined to reverse examiners than in the past.  We plan to do a statistical analysis of this trend in the near future.

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