Digene loses appeal at CAFC

Digene Corporation (“Digene”) appeals from the judgment of the United States
District Court for the Western District of Wisconsin holding that Third Wave
Technologies, Inc. (“Third Wave”) did not infringe the Digene patent in suit.

Digene lost.

Prosecution disclaimer arose -->

See Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378 (Fed. Cir. 1998)
(“[E]xplicit statements made by a patent applicant during prosecution to distinguish a
claimed invention over prior art may serve to narrow the scope of a claim.”); Southwall
Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) (“The prosecution
history limits the interpretation of claim terms so as to exclude any interpretation that
was disclaimed during prosecution.”).

"Consist of" claim language was discussed:

If the term “consists of” appears in the body of a claim, it does not limit
the entire claim as such, but it does limit the clause for which it acts as a transition to
only those elements found in that particular clause. Thus, the clause “consists of”
generally requires that the word “an” following it be limited to one and only one.

The topic of mutations arose:

We finally agree with Third Wave that the district court’s claim constructions do
not exclude possible mutations or subtypes. As the district court stated, “[i]f the HPV
genome from which the HPV 52 DNA must come contains mutations, those mutations
will be found in the HPV 52 DNA and will be covered by the claim.”

Oral argument was cited in the opinion, to rely on an attorney concession in oral
argument to dispose of a matter:

Oral Argument at 6:34-7:06, available at
http://oralarguments.cafc.uscourts.gov/mp3/2008-1242.mp3 (Judge Prost: “You mean
even if we were to affirm the district court’s construction of HPV 52 DNA and the
‘consists’ language, you say there would still be infringement?” William K. West, Jr.
(attorney for Digene): “I think that’s the reason why noninfringement was conceded,
because the problem here is—” Judge Prost: “But could you just sort of direct my
[question], if we were to affirm—” West: “If you were to affirm, I think there would be,
they would avoid infringement, if it has to be only something that is purely HPV 52
DNA.”). While we do not find Digene’s arguments to be convincing on those points, we
need not address them in detail because of Digene’s concession.

Antitrust arose:

Third Wave argues that
Digene uses exclusionary contract penalties to maintain its monopoly power.

Section 2 of the Sherman Act was at issue. Willful
conduct must be objectively anticompetitive to violate the Act. See Verizon Commc’ns
Inc. v. Law Offices of Curtis V. Trinko, LLP, 540 U.S. 398, 407 (2004).

Third Wave argues that Digene’s allegedly exclusionary contracts are anticompetitive.
To prevail on such an exclusive dealing claim, Third Wave must show that a substantial share of the relevant
market was foreclosed to competitors. See Tampa Elec. Co. v. Nashville Coal Co., 365
U.S. 320, 327 (1961); Roland Mach. Co. v. Dresser Indus., Inc., 749 F.2d 380, 393 (7th
Cir. 1984) (Plaintiff alleging exclusive dealing “must prove that [defendant’s conduct] is
likely to keep at least one significant competitor of the defendant from doing business in
a relevant market.”). Thus, “to be condemned as exclusionary, a monopolist’s act must
have an ‘anticompetitive effect.’” United States v. Microsoft Corp., 253 F.3d 34, 58
(D.C. Cir. 2001).




See also
http://ipbiz.blogspot.com/2007/01/digene-sues-third-wave-over-hpv-test.html