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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 La Quinta, CA January 27, 2004 EDWARDS & ANGELL, LLP
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
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
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
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
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
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
DOUMO ARIGATOU GOZAIMASHITA EDWARDS & ANGELL, LLP