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RECENT DEVELOPMENTS IN U.S. PATENT LAW AIPLA Japan Practice Committee John J. Penny, Jr

RECENT DEVELOPMENTS IN U.S. PATENT LAW AIPLA Japan Practice Committee John J. Penny, Jr La Quinta, CA January 27, 2004. Cordis Corp. v. Medtronic Ave, Inc. , 339 F.3d 1352 (Fed. Cir. 2003). GENERAL HOLDING

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RECENT DEVELOPMENTS IN U.S. PATENT LAW AIPLA Japan Practice Committee John J. Penny, Jr

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  1. RECENT DEVELOPMENTS IN U.S. PATENT LAW AIPLA Japan Practice Committee John J. Penny, Jr La Quinta, CA January 27, 2004 EDWARDS & ANGELL, LLP

  2. Cordis Corp. v. Medtronic Ave, Inc., 339 F.3d 1352 (Fed. Cir. 2003) • GENERAL HOLDING • To invoke argument-based estoppel, the prosecution history must demonstrate a “clear and unmistakable surrender of subject matter” • The standard for argument-based estoppel is the same as file wrapper estoppel in the context of the doctrine of equivalents (DOE) EDWARDS & ANGELL, LLP

  3. General Background of Argument-based Estoppel • Argument-based Estoppel (File History Disclaimer) • Affects the literal scope of the claims • Utilized during claim construction – before and separate from DOE analysis • File Wrapper Estoppel • Utilized after claims have been construed when there is no literal infringement • Limits scope of patent under DOE EDWARDS & ANGELL, LLP

  4. General Background of Argument-based Estoppel • ARGUMENT-BASED ESTOPPEL • Must be clear and deliberate • If statements are amenable to different interpretations, then statements are not clear and unmistakable • If there is no intention to limit claim, court may find non-deliberateness • If court finds statements clear, usually find deliberate EDWARDS & ANGELL, LLP

  5. Cordis Corp. v. Medtronic Ave, Inc. • FACTS OF CASE • Reversed Delaware Dist. Ct’s SJ that Medtronic does not literally infringe and JMOL that Medtronic does not infringe under DOE • Cordis’ ‘984 patent is directed to expandable stents that have a tubular member of “uniform thickness” and a plurality of slots parallel to the longitudinal axis of the tubular member EDWARDS & ANGELL, LLP

  6. Cordis Corp. v. Medtronic Ave, Inc. • FACTS OF CASE • During prosecution, Cordis argued Wiktor has “no wall surface having a plurality of slots formed therein” • CAFC held that because this statement has multiple reasonable interpretations, it is not clear and unmistakable ⇨ slots not limited to being formed by removing material from a pre-existing wall surface EDWARDS & ANGELL, LLP

  7. Cordis Corp. v. Medtronic Ave, Inc. • LESSONS LEARNED FROM CORDIS • Exercise care when presenting arguments during prosecution • Only say minimum required to rebut Examiner’s rejections – LESS IS MORE • Personal Interviews can effectively secure allowance with minimal “written” arguments EDWARDS & ANGELL, LLP

  8. DOUMO ARIGATOU GOZAIMASHITA EDWARDS & ANGELL, LLP

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