Using Preliminary Injunction Decisions to Seek Immediate Appeal

University of California v. Dakocytomation California (Dako) (Fed. Cir. 2008)

Plaintiffs UC and Abbott are the owner and licensee of a set of patents covering methods of identifying chromosomal abnormalities.  On appeal, the parties question whether the lower court improperly denied preliminary relief joined with an interlocutory appeal of summary judgment of non-infringement of some claims. 

As in the recent Chamberlain Group decision, the appeal of preliminary relief offered a method for the parties to obtain an interlocutory judgment on claim construction.

District Court Obviousness Trouble: On two separate occasions, the district court denied preliminary relief to the patent holder based on the likely invalidity of the asserted patents. First, the district court held that the patent was likely invalid based because the parent application was invalidating prior art. The court withdrew that analysis after realizing that the asserted patent claimed priority to the filing date of the parent. Next, the district court found the patent likely invalid for obviousness-type double patenting. That reasoning was also withdrawn by the district court after realizing that the patentee’s terminal disclaimer cured the double patenting defect.

Nonetheless, the lower court’s decision in favor of the defendant stuck because the CAFC found that the prosecution history warranted a construction of the claims that was narrow enough to allow Dako to avoid infringement.

Doctrine of Equivalents: In a decision to be contemplated further, the CAFC also decided that a narrowing amendment made during prosecution does not preclude application of the doctrine of equivalents because “the narrowing amendment was only tangential to the accused [] equivalent.”

Judge Prost dissented from the DOE holding and argued that the amendment was absolutely related to the accused equivalent.

Comments

[Malcolm Mooney]

"First, the district court held that the patent was likely invalid based because the parent application was invalidating prior art. The court withdrew that analysis after realizing that the asserted patent claimed priority to the filing date of the parent. Next, the district court found the patent likely invalid for obviousness-type double patenting. That reasoning was also withdrawn by the district court after realizing that the patentee’s terminal disclaimer cured the double patenting defect."

Wow. Either someone is really dense, or the lawyers did a really poor job of educating that someone, or both.

[Malcolm Mooney]

Prost's analysis of the "tangential reason" to rebut the DOE presumption is certainly more correct than the majority's. His cite to that 2005 Federal Circuit case nails it: you aren't entitled under the DOE to the difference between your actual claim and what you amended the claim to avoid. You simply get your actual claim.

The skilled biotech patent attorney never defines "DNA and RNA" as "DNA and RNA" under these circumstances but always to deoxy- and ribo-nucleic acids and functionally equivalent analogues thereof (with examples), unless there is a specific reason for not doing so. Otherwise you are begging for an easy design around.

Or not ... depending on how this issue is ultimately decided.

[examiner#6k]

"Wow. Either someone is really dense, or the lawyers did a really poor job of educating that someone, or both."

Srsly, with judges like that, it should be easy for me to get nominated to the bench. I mean come ON. That's probably the first guy I ever heard of who really really needed to go to PTA.

[Malcolm Mooney]

"That's probably the first guy I ever heard of who really really needed to go to PTA"

Woman actually. Judge Patel is usually pretty sharp and gets her pick of decent clerks from the local law schools. I wonder what happened there.

[Andrew Dhuey]

Mr. Mooney, Judge Prost is also a woman ("His cite to...").

[BabelBoy]

What an incredible embarrassment! Judicial negligence. Just the latest example of why the CAFC has to take a de novo role as often as possible.

There are some decisions that are so bad that the costs of the appeal ought to come out of the judge's retirement account.

If the Dako lawyers made the obviousness or double-patenting arguments, they ought to be sanctioned.

Not that the CAFC didn't mess this up, too. It's a head-scratcher wading through the CAFC's uber-twisted claim construction to reach the result that adding non-labeled DNA gets around a claim using unique labeled DNA with no explicit inclusion or exclusion of non-labeled.

Nasty.

[BabelBoy]

What an incredible embarrassment! Judicial negligence. Just the latest example of why the CAFC has to take a de novo role as often as possible.

There are some decisions that are so bad that the costs of the appeal ought to come out of the judge's retirement account.

If the Dako lawyers made the obviousness or double-patenting arguments, they ought to be sanctioned.

Not that the CAFC didn't mess this up, too. It's a head-scratcher wading through the CAFC's uber-twisted claim construction to reach the result that adding non-labeled DNA gets around a claim using unique labeled DNA with no explicit inclusion or exclusion of non-labeled.

Nasty.

[Anon]

Isn't "PNA" the same as synthetic DNA or RNA? I didn't see where the claim was limited to "native" nucleic acids, so why shouldn't "syntehtic" nucelic acids be covered? Why allow a party that switches a D to a P avoid DOE?

[Anon#2]

PNA is not simply a "synthetic nucleic acid". It has a completely distinct backbone (made of amide linkages, like a protein, rather than by phosphate linked sugars, as in RNA and DNA). PNAs can function in many ways equivalent to DNA and RNA, but have many different properties. For example, they generally are not recognized by enzymes that act on nucleic acids, and also for different complexes. For some applications, the difference is significant, for others not. However, for the application at hand, PNAs work well (maybe even better than DNA or RNA) since they hybridize very effectively with DNA. In summary, I think PNA would not always be covered as an equivalent to DNA and RNA, but in this case, it was.

[Sprout23]

(1) The Dako lawyers (from Finnegan, Henderson) did not argue the parent case was prior art to the divisional, nor did they argue invalidity based on obviousness-type double patenting (the briefs are available on Westlaw if anyone wants to verify). Judge Patel simply got it wrong. Plaintiffs' counsel clarified the parent/divisional issue in a scheduling conference held not long after the PI opinion issued, hence her subsequent attempt to clarify the basis for her decision, where she again got it wrong.

(2) As a previous poster indicated, PNA has many different physical properties than conventional DNA or RNA -- it's not simply a synthetic nucleic acid.

(3) Judge Prost got the prosecution history estoppel argument right -- there's no way the amendment to limit blocking nucleic acids to DNA and RNA was tangential to the purpose of the amendment. It's a shame, because that leaves Dako on the hook for alleged infringement of the earlier issued patent.

[Sprout23]

And frankly, I was surprised the Federal Circuit granted UC/Abbott's petition for certification under 1292(b) precisely because they don't like to give parties a chance to get an interlocutory ruling on claim construction. Unfortunately, in this case, I think it was easier to persuade them because Judge Patel's claim constructions evolved over time as the record became more developed from the PI through the claim construction and SJ rulings, and because plaintiffs successfully painted her as someone who didn't know anything about patent law (based almost entirely on the errors in her PI opinion and her subsequent attempt to correct it). That's a shame, really, because she's pretty sharp, and has handled a number of technical cases over the years.

[Pete]

The USPTO is forcing users of EFS to use insecure versions of Acrobat for form submission:
http://www.uspto.gov/ebc/portal/forms.htm

All those versions of acrobat are considered insecure, and if users continue to use them, they could have their machines compromised. Can you please publish this? The PTO has ignored my pleas to update the forms for version 8.1.2.

Insecure acrobat versions:
Acrobat Reader 8.1.1
http://secunia.com/advisories/28802/

Acrobat Reader 7.0.9
http://secunia.com/advisories/28851/

[PopeG]

Better yet, post something that suggests that nobody use form-fillable PTO forms.

In my opinion, form fillable PTO forms are a lawsuit waiting to happen.

Better yet, use your own Word forms and print them to PDF - then there is never any doubt as to what was in those "fillable" fields.

[examiner#6k]

Remind me in the morning pete I'll see what I can find out.

[CaveMan]

On a sidenote: the Troll Tracker website is nowhere to be found.

[Just an ordinary inventor(TM)]

Thank you CaveMan --

Good riddance. One win for the Gipper. However, I believe Cisco’s Troll Tracker Blog has done much damage to many. Of course, it would be ludicrous for Cisco to deny liability, as ludicrous as the seven tobacco company executives telling Congress that cigarettes are not addictive and may not even be bad for you.

Have any Complaints against Cisco be filed yet?

[me]

"The skilled biotech patent attorney never defines "DNA and RNA" as "DNA and RNA" under these circumstances but always to deoxy- and ribo-nucleic acids and functionally equivalent analogues thereof"

If only this were true.

You are correc tthat it should be defined this way, but too often the terms are left to stand on their own. That said, any undergrad can find the equivalents in their text so maybe the DOE should apply...

[DudeAbides]

The Troll Tracker is around -- it looks like you've got to register to participate. Fair enough, given the human paraquats at Niro trying to screw this guy's First Amendment rights.

Then you've got the nematodes who call it "Cisco's Troll Tracker Blog."

This aggression will not stand, man.

Dude

[Just an ordinary inventor(TM)]

Mr. DudeAbides,

You used some 50 cent words for an opinion not worth 2 cents – who are you trying to impress? Do you get paid to advance such poppycock? Is your real name Rick? Come on, you can tell the truth, we all know. You’ll want to thank me later.

[HexCorp]

It is good that those parties must question if it is true that the lower court whether improperly denied preliminary relief joined with an interlocutory appeal of summary judgment of non-infringement of some claims. In this way, people will know the truth.Right?