Did Innogenetics win or did Abbott Lose; A Bad Result Cause by Strategic Decisions

Innogenetics, N.V. v. Abbott Laboratories, [2007-1145, -1161](January 17, 2008)[MOORE, Bryson, Clevenger] The Federal Circuit reversed and remanded the district court’s judgment as a matter of law that claim 1 of the U.S. Patent No. 5,846,704 was not anticipated, and vacated the permanent injunction granted against Abbott. The Federal Circuit otherwise affirmed the district court, including the determination that Abbott’s infringement was not willful.

SIGNIFICANCE: The case seemed to turn more on faulty strategy that resulted in the exclusion of evidence, rather than a failure of evidence. The Federal Circuit provide a glimmer of hope that claims do define the scope of the invention, contrary to recent cases that are critical of claims that go beyond the specific embodiments disclosed.

BRIEF: In determining the meaning of a disputed claim limitation the Federal Circuit looks primarily to the intrinsic evidence of record, examining the claim language, the written description, and the prosecution history. Words of a claim "are generally given their ordinary and customary meaning" as understood by a person of ordinary skill in the art. The claims are read in view of the specification, which is the single best guide to the meaning of disputed terms. In examining the specification for proper context, however, this court will not at any time import limitations from the specification into the claims. Abbott contended that the word "as" in the claims required contemporaneous detection. Abbott noted that this was the only embodiment described. The Federal Circuit countered that it is well established that an applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention. COMMENT: THIS IS A NOTABLE DEPARTURE FROM THE CURRENT DIRECTION OF THE FEDERAL CIRCUIT WHICH HAS HELD PATENTS INVALID FOR NOT DESCRIBING OR ENABLING FUTURE EMBODIMENTS.

The Federal Circuit held that Abbott had waived its defense to infringement that its method was not known to the ordinary artisan at the time of the filing of the patent application because it raised the issue for the first time at 9:30 p.m. on the night before the start of trial and did so simply by submitting a proposed jury instruction, rather than by bringing the matter directly to the attention of the court and opposing counsel. Moreover, the Federal Circuit rejected Abbott's argument that a patent can never be literally infringed by embodiments that did not exist at the time of filing. The Federal Circuit said "Our case law allows for after-arising technology to be captured within the literal scope of valid claims that are drafted broadly enough." COMMENT: AGAIN, THIS STANDS OUT FROM THE DIRECTION OF RECENT CASES THAT INVALID CLAIMS THAT COVER EMBODIMENTS NOT DESCRIBED AND ENABLED. The Federal Circuit affirmed the district court's exclusion of Abbott's expert because the expert witness report was deficient. The Federal Circuit agreed that the report was conclusory in providing no reason to combine the references listed, saying "knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references to reach the particular claimed method." The Federal Circuit also affirmed the exclusion from evidence of references disclosed on the last day of discovery, even though Abbott fully complied with 35 USC 282. The Federal Circuit did reverse the district court's exclusion of testimony about anticipation as to one reference, holding that the district court was incorrect that the testimony was based on a incorrect claim construction.

The Federal Circuit also affirmed the finding of no inequitable conduct, noting that the district court correctly concluded that Innogenetics’ behavior before the PTO did not constitute a material omission or misrepresentation. Innogenetics’ representation of the Cha PCT application amounted to mere attorney argument and Federal Circuit precedent has made clear that an applicant is free to advocate its interpretation of its claims and the teachings of prior art.