Monday, November 20, 2006

DePuy Spine gets another chance; Impax gets a remand in riluzole case

Reuters notes that the CAFC revived part of a patent infringement case on Nov. 20 that Johnson & Johnson subsidiary DePuy Spine is pursuing against the spinal business of Medtronic Inc. This is but one part of a large IP war.

The CAFC overturned a ruling by a federal district judge who had dismissed J&J's charges that Medtronic's Vertex system of spinal surgery screws infringed on a patent DePuy licenses from Biedermann Motech GmbH.

Kenneth Adamo represented DePuy Spine, the plaintiff-appellant in the case. D Mass had granted SJ of noninfringement to Medtronic.

Medtronic lost on a claim construction issue as to the meaning of the term "hollow spherically-shaped portion."

The doctrine of equivalents was also implicated. The CAFC cited Freedman, 420 F.3d 1350 as to the all elements / claim vitiation concept. The CAFC also worked through Sage Products, 126 F.3d 1420. Discussing Tronzo, the CAFC seems to say that a cone-shaped structure can be the equivalent of a spherically-shaped structure.

In Impax v. Aventis, appellant Impax lost on an inequitable conduct issue but prevailed on an anticipation issue. The drug at issue was riluzole (Rilutek).

Impax argued that claims 1-5 of the '814 patent of Aventis were anticipated by the '940 patent. An issue was that the disclosing chemical formula of the '940 encompassed many, many compounds, and that the '940 did not teach particularly the effectiveness of riluzole in treating ALS. Thus, the issue was one of enablement of the '940. The CAFC cited Novo Nordisk, 424 F.3d 1347 as to the difference between enablement for 102 and enablement under 112. The CAFC remanded to the district court to make proper factual findings to reach an appropriate legal conclusion as to the enablement of the '940 reference.


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