Innogenetics, N.V. v. Abbott Laboratories - WilmerHale

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Patterson stated that the Resnick patent is capable of “detecting and classifying types ofHCV.” Docket No. 33 (Patterson Expert Rep. 19). At trial, contradicting the testimonyof Innogenetics’ witnesses, he testified that the Resnick patent “distinguish[es]” betweentwo groups of HCV, type 1 HCV and all other types of HCV. (Trial Tr. vol. 3, 23:19-24:4,Aug. 29, 2006). Dr. Patterson’s reading of the Resnick patent was that it disclosed amethod capable of identifying whether a sample contained HCV type 1 as opposed toanother type of HCV. If true, this would meet the “method of genotyping” limitation ofclaim 1. 6Dr. Patterson’s failure to use the district court’s exact words does not changethe substance of his testimony or render it inapplicable.We therefore find improper the district court’s preclusion of Dr. Patterson’stestimony on the basis that he was using a different definition of “method of genotyping.”Accordingly, we reverse the district court’s entry of JMOL and remand for a new trial onthe issue of whether the Resnick patent anticipated claim 1 of the ’704 patent consistentwith this opinion.III. INEQUITABLE CONDUCTWe review summary judgment decisions de novo, reapplying the standard usedby the district court. Frank’s Casing Crew & Rental Tools, Inc. v. Weatherford Int’l, Inc.,389 F.3d 1370, 1376 (Fed. Cir. 2004); Steen v. Myers, 486 F.3d 1017, 1021 (7th Cir.2007). Under that standard, summary judgment must be granted when, drawing all6Innogenetics may have other arguments or contradictory evidence withregard to whether the Resnick patent anticipates. We decide only that, in light of theproper construction of a “method of genotyping,” it was an abuse of discretion for thedistrict court to preclude Dr. Patterson’s testimony on the Resnick patent and to grantJMOL. What a prior art reference discloses is, of course, a question of fact, and if thereare disputes over material facts, whether the Resnick patent anticipates claim 1 of the’704 patent should be resolved at trial by the fact finder.2007-1145, -1161 21
easonable inferences in favor of the non-movant, there is no genuine issue as to anymaterial fact and no reasonable jury could return a verdict for the non-movant.Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).“[I]nequitable conduct includes affirmative misrepresentation of a material fact,failure to disclose material information, or submission of false material information,coupled with an intent to deceive.” Pharmacia Corp. v. Par Pharm., Inc., 417 F.3d1369, 1373 (Fed. Cir. 2005) (quoting Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178(Fed. Cir. 1995)). Materiality is defined by what a reasonable examiner would haveconsidered important in deciding whether to allow a patent application. Digital Control,Inc. v. Charles Mach. Works, 437 F.3d 1309, 1316 (Fed. Cir. 2006). Both intent andmateriality are questions of fact, and must be proven by clear and convincing evidence.Young v. Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir. 2007) (citing J.P. Stevens & Co.v. Lex Tex Ltd., 747 F.2d 1553, 1559 (Fed. Cir. 1984)).Abbott contends that Innogenetics’ representation to the PTO of the relevance ofthe Cha PCT application during the prosecution of the ’704 patent amounts toinequitable conduct. Prior to applying for the ’704 patent (’568 application), theinventors of the claimed method of genotyping filed for a patent (EP ’342 application) inthe European Patent Office (EPO). The EP ’342 application was prosecuted under a“problem solution” framework common in European practice in which a piece of art(whether relevant or not) is termed the “closest prior art.” The prosecuting attorneyidentified the Cha PCT application as the closest prior art, but argued that none of thesubmitted references taught or disclosed the method claimed in the EP ’342 application.Under its standards of patentability, the EPO determined that certain claims in the EP2007-1145, -1161 22
Page 1 and 2: United States Court of Appeals for
Page 3 and 4: appeal, we find no reversible error
Page 5 and 6: 1) U.S. Patent No. 6,071,693 (the C
Page 7 and 8: the complex has been destroyed, and
Page 10 and 11: proposed jury instruction, rather t
Page 12 and 13: granted Innogenetics’ motion in l
Page 14 and 15: On appeal, Abbott argues in a singl
Page 16 and 17: permitted to adduce evidence on obv
Page 18 and 19: Abbott did not disclose the Cha pat
Page 20 and 21: detects and classifies the various
Page 24 and 25: ’342 application were not novel i
Page 26 and 27: At the damages phase of trial, the
Page 28 and 29: Abbott could sell its product throu

Innogenetics, N.V. v. Abbott Laboratories - WilmerHale

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