Issue Preclusion Decides Claim Construction

Posted on July 2, 2008 by R. David Donoghue

Shen Wei (USA), Inc. v. Ansell Healthcare Prods., Inc., No. 05 C 6003, Slip Op. (N.D. Ill. May 29, 2008) (Guzman, J.).

Judge Guzman construed the disputed claim terms from plaintiff's patent for a skin-enhancing glove. The parties disputed two terms: dehydrated and dry. Defendants argued dehydrated meant removal of all water, while plaintiffs argued it meant removal of water, but not necessarily all water. Judge Holderman construed dehydrated as used in a related patent in an earlier suit between the parties, consistent with plaintiff's proposed construction.* Because Ansell advanced the same construction in the present suit that it lost in the earlier suit before Judge Holderman, the Court held that collateral estoppel, or issue preclusion, prevented Ansell from arguing against plaintiff's construction. The Court also noted that Judge Holderman's construction was correct.

The Court construed "dry" in a similar fashion to mean removal of water, but not necessarily all water, based upon the prosecution history.

* I was involved in the briefing before Judge Holderman, but I am not involved in the current case.

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Parties Make Each Others' Cases With Unsupported LR 56.1 Statements

Posted on October 15, 2007 by R. David Donoghue

Shen-Wei (USA), Inc. v. Ansell Healthcare Prods., Inc., No. 05 C 6003, 2007 WL 2903184 (N.D. Ill. Sep. 28, 2007) (Guzman, J.).

Judge Guzman denied defendant’s motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(b). Defendant argued that plaintiffs sold medical gloves embodying the claims of their patent, U.S. Patent No. 6, 953,582 (the “’582 patent”), to a glove with a coating of a skin-soothing substance in July 1999, approximately two years before the ‘582 patent’s July 1, 2001 critical date. Furthermore, plaintiffs admitted that they sold patented gloves as early as July 1999 by failing to cite any contradictory evidence in their responses to defendant’s Local Rule 56.1 statement.

But plaintiffs argued that the ‘582 had a right to the filing date of its parent, U.S. Patent No. 6,274,154 (the “’154 patent”). The ‘154 patent only disclosed coating a glove with aloe vera. But plaintiffs argued that the ‘154 patent inherently disclosed skin-soothing substances other than aloe vera. Plaintiffs supported its arguments with testimony from the inventor and plaintiffs’ expert.

Because, among other reasons, defendant failed to support its denials of inherency with any facts, the Court deemed admitted, at least, structural inherency and inherency of theory. Because defendant admitted inherent disclosure, plaintiffs’ ‘582 patent had the critical date of its parent ‘154 patent – April 7, 1998. Plaintiffs’ admitted July 1999 sales of patented gloves, therefore, were not an on-sale bar.

Practice tip: When making or responding to Local Rule 56.1 statements, always support your statements or responses with evidence.

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