Monday, January 25, 2010

Therasense v. Becton (2009-1008)

The case involved a patent for electrochemical sensors for measuring glucose levels in blood. A trial was held and the jury found that the asserted claims were infringed under the doctrine of equivalents but were “invalid by reason of anticipation or obviousness.”

Jury Instructions on Anticipation Erroneous. On appeal, the patentee argued that the district court’s jury instruction on anticipation was erroneous. The jury instructions stated that “for anticipation, it is sufficient if the single reference would have informed those skilled in the art that all of the claimed elements could have been arranged as in the claimed invention.” (p. 8.) This was erroneous because “it makes sufficient, for purposes of anticipation, a prior art disclosure of individual claim elements that ‘could have been arranged’ in a way that is not itself described or depicted in the anticipatory reference.” (p. 8-9.) Anticipation requires that the “way in which the elements are arranged or combined in the claim must itself be disclosed, either expressly or inherently, in an anticipatory reference.” (p. 9.) “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.”

“The concept of ‘inherent disclosure’ does not alter the requirement that all elements must be disclosed in an anticipatory reference in the same way as they are arranged or combined in the claim.” (p. 9.) “For a claim to be anticipated, each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference.” (p. 10.)

Error Harmless Because Claims Were Obvious as a Matter of Law. Despite the fact that the jury instructions on anticipation were erroneous, the error was determined to be harmless because the Federal Circuit concluded that the claims were obvious as a matter of law. {B]ecause the jury must at least have found the claims obvious,” the jury instruction on anticipation could not have changed the result.

In its obviousness analysis, the court rejected the patentee’s arguments that the invention solved a problem for which there was a long-felt need since the claims at issue were not limited to devices that solved the problem. “Because the claims are broad enough to cover devices that either do or do not solve the “short fill” problem, Abbott’s objective evidence of non-obviousness fails because it is not “commensurate in scope with the claims which the evidence is offered to support.” (p. 16.)