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Edwards Lifesciences’ Litigation Team may not Participate in Reexamination
| February 25, 2011
Earlier this month we reported (here) a trend among trial courts, allowing patentees’ litigation counsel to participate in parallel reexamination proceedings. Judge Sleet of Delaware, however, bucked that trend in his order Wednesday in Edwards Lifesciences v. CoreValve et al. (Case No. 08-91-GMS) (here), ruling that Edwards’ technical expert and trial attorneys could not assist in the reexamination of the patent-in-suit.
Edwards sued CoreValve and Medtronic CoreValve for infringement of three patents, including U.S. Patent Nos. 5,411,552 and 6,582,462 for implantable cardiac valve prostheses. CoreValve replied by requesting reexamination of the ‘552 and ‘462 patents. Reexamination was granted and prior art rejections are now pending. On February 9, counsel for Edwards wrote to Judge Sleet asking for a ruling on whether its expert witness and trial counsel were permitted, under the protective order, to assist in replying to the pending rejections.
Judge Sleet has now said NO. He explained that such participation “in the reexamination would create a high risk that confidential CoreValve/Medtronic information [obtained under the protective order] would be used or disclosed.” The Judge added that “the risk of the use of confidential information and the harm that the defendants might suffer as a result far outweighs the potential harm to Edwards of enforcing the prosecution bar in the reexamination.” Edwards’ reexamination attorneys would, of course, be permitted access to any “public record relating to this case in its reexamination response.”
Judge Sleet also commented out that “the defendants have limited themselves to the use of the public record in making their reexamination arguments,” so that Edwards’ reexamination lawyers should be able to do the same. This comment, though likely not necessary to Judge Sleet’s ruling, is “a valuable takeaway” – a defendant, hoping to prevent the patentee’s trial team from participating in parallel reexamination proceedings, should use separate reexamination so that it is clear that only public information was used in the preparation of its reexamination request.
Incidentally, last April a jury found claim 1 of the ‘552 patent to be valid and infringed by CoreValve, and awarded Edwards $74 million. Judge Sleet denied Corevalve’s post-trial motions and the case is now on appeal to the CAFC. The ‘552 reexamination is thus of some consequence.
