KSR

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Lexion Medical, LLC v. Northgate Techs., Inc., No. 04 C 5705, Slip Op. (N.D. Ill. Jun. 8, 2007).*
Judge Rosenbaum (a visiting judge, who is the Chief Judge for the District of Minnesota) denied defendants’ Fed. R. Civ. P. 60(b) for relief from the Court’s judgment. The Court held a trial in October 2006 resulting in a jury verdict that defendants’ insufflator (a device that blows a powder, gas or vapor into a body cavity) infringed plaintiff’s patent (you can read more about the case in the Blog’s archives). In their motion, defendants argued that the Supreme Court’s April 2007 obviousness decision, KSR Int’l Co. v. Teleflex Inc., __ U.S. __, 127 S.Ct. 1727 (2007), dramatically changed obviousness law and conflicted with the jury instructions which “nullif[ied] the jury verdict.” Defendants moved the Court to invalidate two claims of the patent in suit or to order a new trial on obviousness. But the Court held that even under the KSR standard, the jury’s verdict was fully supported by evidence at trial. Because a corrected instruction would not have changed the result, the erroneous instruction was harmless.
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Continue Reading Pre-KSR Validity Verdict Upheld Under KSR Standard

Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 1549498 (N.D. Ill. May 24, 2007) (Coar, J.).
Judge Coar denied defendant Sandoz, Inc.’s (“Sandoz”) motion to stay the Court’s preliminary injunction pending appeal to the Federal Circuit pursuant to Fed. R. Civ. P. 62(c). The Court previously granted plaintiff Abbott’s motion for a preliminary injunction (you can read more about that decision and related cases in the Blog’s archives). 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). Sandoz argued that the PI should be stayed pending appeal because of conflicting Federal Circuit law regarding the Court’s claim construction and because of the Supreme Court’s KSR decision.
First, Sandoz argued that two different Federal Circuit panels had issued differing rulings construing the claims at issue. Judge Coar rejected this argument because the construction relied upon in the PI ruling was the Federal Circuit’s second, broader claim construction. The Court explained that the “only rational assumption” was that the second panel was aware of the constructions in the first, but relied upon something different in the record or identified a fact missed by the first panel. Further, the Court predicted that the Federal Circuit would not retreat from its second opinion to its first, prior opinion.
Second, the Court held that the KSR decision did not change its analysis of Sandoz’s likelihood of success on its obviousness argument. The Court provided a detailed explanation of KSR and its reasoning, but differentiated the current case because the Court held that one of the limitations in the Abbott claims did not exist in Sandoz’s cited combination of prior art references. Because the references did not disclose one of the elements of the claims, whether or not the Court used a strict application of the Federal Circuit’s teaching, suggestion or motivation test did not change the outcome of its analysis. Both the Federal Circuit’s and the Supreme Court’s standards required that all elements be disclosed by the combined prior art references.
Finally, the Court held that Sandoz had not provided sufficient evidence that it would be irreparably harmed. Sandoz argued that if it could not enter the market at the same time as other generics, which are not subject to PI’s, pharmacists would be reluctant to later restock their shelves with Sandoz’s generic version of the drug. But the Court reasoned that the lure of generics is their prices, not their brand recognition, so Sandoz should have no trouble re-entering the market at a later date should it prevail.
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Continue Reading Neither Federal Circuit Split Nor KSR Warranted Stay of a Preliminary Injunction Pending Appeal

Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., No. 06-1402, Slip Op. (Fed. Cir. May 9, 2007).
The Federal Circuit issued its first opinion analyzing an obviousness determination based upon the Supreme Court decision in KSR v. Teleflex, 550 U.S. __, 2007 WL 1237837 (2007). The Court affirmed the district court’s holding that the claim was invalid based upon obviousness and explained that obviousness is not determined by “a rigid formula disassociated from the consideration of the facts of a case.” You can download a copy of the Federal Circuit’s decision here.
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Continue Reading First Post-KSR Fed. Cir. Obviousness Analysis

Following up on my post yesterday, The Chicago Daily Law Bulletin has published this story regarding today’s Supreme Court argument in KSR International Co. v. Teleflex Inc.  The argument centered around whether the Federal Circuit’s obviousness test should be revised (more on the KSR case from Patently-O here and here).  Of course, Justices often play devil’s advocate in oral arguments, so it is dangerous to presume outcomes based upon oral argument, but it looks like it was good legal theater.  Continue Reading Extra, Extra Read More About It: Chicago Daily Law Bulletin on the KSR Argument