March 27, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the final three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 12th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Liebel-Flarsheim Company, et al. v. Medrad, Inc. (03/22/2007): appeal of grant of summary judgments of patent invalidity, infringement, and correct inventorship designation (affirmed invalidity, remaining issues moot); discussion of two patents relating to a front-loaded fluid injector for delivering contrast agents (U.S. Patent No. 5,456,669, entitled “Method of front loading an injector and injecting fluid into animals therewith,” and U.S. Patent No. 5,658,261, entitled “Disposable front loadable syringe”) and two patents relating to a computer-controlled injector with a retractable syringe plunger (U.S. Patent Nos. 5,662,612 and 5,928,197, both entitled “Controlling plunger drives for fluid injections in animals”); claims deemed invalid for lack of enablement because the full scope of the claims were not enabled; background of the specification actually taught away from the scope of the claims; “the applicant’s specification must enable one of ordinary skill in the art to practice the full scope of the claimed invention”; “the burden of showing invalidity is “especially difficult” when the prior art reference was before the examiner during prosecution”; patents deemed invalid for anticipation

Pfizer, Inc. v. Apotex, Inc. (formerly known as TorPharm, Inc.) (03/22/2007): appeal of finding of infringement (dismissing declaratory action for patent invalidity and unenforceability) and injunction against selling a generic version of a drug prior to a set date (reversed); discussion of patent relating to a composition to treat hypertension and vasospastic angina (U.S. Patent No. 4,879,303, entitled “Pharmaceutically acceptable salts”); plaintiff developed and sold a specific salt of the compound claimed in the patent; prima facie showing of obviousness by challenger of a patent because “the patent examiner initially rejected the claims to [the specific salt of the compound] for obviousness” is an incorrect statement of the law; discussion of the four Graham factors for obviousness; regarding secondary considerations, superior properties must be unexpected with evidence to demonstrate the same; “[a]lthough secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion”; patent claims held to be invalid for obviousness for a different reason, namely because the challenger of the patent "introduced clear and convincing evidence that a skilled artisan would have had a reasonable expectation of success with the besylate salt form of [the compound] at the time the invention was made"

RFR Industries, Inc. v. Rex-Hide Industries, Inc. v. Century Steps, Inc. (03/23/2007, non-precedential): appeal of district court’s determination that plaintiff cannot recover infringement damages from defendant, defendant’s grant of attorneys fees, and the permanent injunction against plaintiff from pursuing certain claims in arbitration and ordering all future related actions to be filed by plaintiff in a particular court (affirm-, reverse-, and vacate-in-part and remand); discussion of patents relating to a railway system using a rubber product (U.S. Patent No. 5,577,662) and a method of installing the rubber product (U.S. Patent No. 5,535,947) (both entitled “Embedded railway track system”); indemnification for patent infringement by sales contract and settlement agreement, recovery of attorneys’ fees from provision in settlement agreement; vacated attorneys’ fees recovery due to costs incurred by defendants to establish their indemnification position; reversed permanent injunction and allowed future claims to be handled by arbitration


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Mark Reichel
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I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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