Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 4287501 (N.D. Ill. Dec. 4, 2007) (Coar, J.).*
Judge Coar construed the claims of plaintiff Abbott’s patent related to an extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL), denied defendant Sandoz’s motion for summary judgment of noninfringement and granted Abbott summary judgment regarding anticipation, obviousness and inequitable conduct. Of particular interest, the Court held that the use of Markush group language – “selected from the group consisting of” – in the specification did not necessarily limit the construction of claim terms. The Court also noted that materiality of a reference in an inequitable conduct analysis was determined from the perspective of a reasonable examiner, not the patentee.
* Click here for more on this case and related cases.

Continue Reading Markush Language in Specification Does Not Limit Claims

The post-trial briefing appears to be complete. And Judge Moran recently heard argument on, but did not decide, eSpeed’s motion for an evidentiary hearing on inequitable conduct. The Court held a status conference for this case and Trading Technologies’ related cases yesterday, December 20. I was unable to attend, so I do not know if the Court ruled on any motions or otherwise discussed how the case will proceed. But I will keep you posted as I get more information.
* Click here to read much more about this case and Trading Technologies’ (“TT”) related cases in the Blog’s archives.

Continue Reading Trading Technologies v. eSpeed: Post-Trial Update

II have not been able to fulfill my promised additional coverage of the inequitable conduct portion of the Trading Technologies v. eSpeed case, but it is not my fault.* The Court decided to consider eSpeed’s inequitable conduct and patent misuse defenses on the papers. The Court ordered a briefing schedule that will complete briefing by early December for eSpeed’s inequitable conduct and patent misuse defenses , as well as eSpeed’s post-trial motions regarding willfulness and damages remittitur and TT’s motions for its attorneys’ fees and costs. The Court has scheduled a status conference for December 20th. Perhaps the parties will have rulings by the end of the year.
Practice tip: In my experience, one of the dangers of doing inequitable conduct after the conclusion of the jury trial is that both the Court and the parties are exhausted and emotionally drained at the end of the jury trial (particularly after a multi-week trial like this one). So, when it is time to try inequitable conduct, either the Court no longer wants the trial or the parties and the Court are so exhausted that they have trouble keeping their focus and energy level where it was for the jury trial despite the importance of the issues. I do not know why the parties or the Court decided that inequitable conduct should be decided on the papers in this case. But any time that inequitable conduct is to be tried after a jury trial, you run the risk that no live evidence will come in on inequitable conduct.
* Click here to read much more about this case and Trading Technologies’ (“TT”) related cases in the Blog’s archives

Continue Reading Trading Technologies v. eSpeed: Inequitable Conduct Proceedings Update

Trading Techs. Int’l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 20, 2007) (Moran, Sen. J.).*
Judge Moran granted in part plaintiff Trading Technologies’ (“TT”) motion to bifurcate inequitable conduct from the rest of the trial – in another opinion issued on the same day, the Court denied defendant eSpeed’s motion to bifurcate willfulness and damages from the liability phase of the trial. The Court noted that bifurcation is the exception not the rule, but that Fed. R. Civ. P. 42(b) allows the Court to bifurcate trials for convenience, to avoid prejudice or when bifurcation benefits expediency and economy. The Court also explained that bifurcating inequitable conduct does not violate the Seventh Amendment, citing Gardco Mfg., Inc. v. Herst Lighting Co., 820 F.2d 1209 (Fed. Cir. 1987).
TT sought an inequitable conduct bench trial after the conclusion of the jury trial. eSpeed asked the Court to try inequitable conduct before the jury and have the jury issue an advisory verdict pursuant to Fed. R. Civ. P. 39(c). The Court observed that there was substantial case law supporting both TT’s and eSpeed’s positions, showing the discretion the Court has on the issue. But the Court followed the reasoning of Judge Norgle in THK Am., Inc. v. NSK, Ltd., 1996 WL 33398071 (N.D. Ill. 1996). Judge Norgle bifurcated inequitable conduct, but heard the evidence of inequitable conduct each day after the jury was dismissed as the inequitable conduct evidence came up. The Court reasoned that this form of bifurcation prevented the jury from hearing potentially prejudicial evidence, while allowing witnesses not to have to return for additional days of testimony.
Trial is set to start in this case the week of September 10. Between now and then expect to see several more opinions in this case and its related cases. Additionally, I have some other obligations that week, but am planning to blog some of the trial. Stay tuned.
*You can download this opinion here and you can read much more about this case and related cases in the Blog’s archives.

Continue Reading Court Bifurcates Inequitable Conduct, Will Try Cases in Parallel

Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2006 WL 1141635 (N.D. Ill. Apr. 16, 2007) (Coar, J.).

Judge Coar granted plaintiff Abbott’s motion for a preliminary injunction, after having previously denied it a TRO.*  The PI enjoined defendant Sandoz from selling a generic version of Abbott’s patented extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL).  The Court held that Sandoz had shown a substantial likelihood of materiality and Abbott’s intent to deceive the PTO  based upon Abbott’s failure to disclose certain taste perversion data during prosecution.  But because Abbott abandoned the claims to which the taste perversion data was relevant of its own accord, the Court did not find the patent preliminarily unenforceable.  The Court explained its reasoning as follows:

Redemption is one of the core principles of the American ethos.  Thus in addition to being contrary to the spirit of Scribbs, Kimberly-Clark and the Code of Federal Regulation, it seems wholly inequitable to hold a patent to be invalid for fraudulent conduct in the prosecution of a claim that was withdrawn before actual prosecution had even begun.


Continue Reading Preliminary Injunction Granted Despite Likely Inequitable Conduct Because Likely-Tainted Claims Were Voluntarily Withdrawn From Prosecution

Murata Mfg. , Ltd. v. Bel Fuse, Inc., No. 03 C 2934, 2007 WL 781252 (N.D. Ill. Mar. 8, 2007) (Cole, Mag. J.).

Judge Cole held that plaintiff’s inequitable conduct defense did not waive its privilege and, therefore, denied defendant’s motion to compel privileged documents.  Defendant asserted that plaintiff engaged in inequitable conduct by failing to disclose an allegedly material piece of prior art during prosecution of the patent-in-suit.  Defendant’s defense was essentially that their counsel and inventors fully understood their disclosure obligations and chose not to disclose the alleged prior art because  it was not material or even similar to the patent-in-suit.  Defendant argued that plaintiff waived its privilege when its 30(b)(6) deponent testified that:  1) he had been told that plaintiff’s in-house counsel instructed its prosecuting attorneys to disclose all relevant prior art to the PTO; and 2) that he was confident that the inventors understood their duties of disclosure based upon their past experience as patentees and the fact that they had each had several conversations with plaintiff’s prosecution counsel.  But the Court held that disclosure of the occurrence of these conversations, without disclosing any of the contents did not act as waiver.   The Court noted that if disclosure of the existence of these conversations without elaboration constituted wavier, then the exchange of privilege logs would also constitute waiver.


Continue Reading Inequitable Conduct Defense Does Not Waive Privilege

Shen Wei (USA) Inc. v. Sempermed, Inc., No. 05 C 6004, 2007 WL 328846 (N.D. Ill. Jan. 30, 2007) (Guzman, J.).

Judge Guzman granted defendant leave to amend its answer adding inequitable conduct affirmative defenses and counterclaims alleging that plaintiffs failed to disclose their prior art sale of a medical glove embodying their invention

Judge Darrah, after finding each of the eleven patents-in-suit unenforceable for inequitable conduct, held that the suit was exceptional based upon the inequitable conduct, the filing of several frivolous claims which were previously dismissed and misconduct at trial, providing the Court the discretion to award attorney’s fees.  The court also did a detailed analysis

Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3069544 (N.D. Ill. Oct. 24, 2006) (St. Eve, J.).

After a jury found that defendant willfully infringed certain claims of the patents-in-suit, Judge St. Eve conducted a bench trial to determine whether the patents were unenforceable based upon prosecution

Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 2088437 (N.D. Ill. July 24, 2006) (St. Eve, J.).

Judge St. Eve denied plaintiff, Black & Decker’s (“B&D”) summary judgment motion on defendant Bosch’s inequitable conduct defense. While prosecuting various applications related to a rugged jobsite radio and charger (the “Smith patents”), B&D became aware of inventor Joseph Domes’s similar applications, which later matured into the patents-in-suit. To avoid a possible interference, B&D licensed Domes’s applications (the “Domes patents”) and ultimately became the exclusive licensee of the two Domes patents.


Continue Reading Inequitable Conduct Summary Judgment & Reading the Federal Rules