While looking at dockets for TAUG's CEO I checked on DECN's appeal. J&J has responded to the appeal. Interesting, DECN has the same law firm that Taug's CEO is beating to a pulp in 2 cases...Hopefully, DECN prevails for shareholders, but it does not seem to be nearly the slam dunk that Pluto and Bozo berman have suggested. What else is new...
Here is the introduction, I will post the whole answer later. Almost seems like J&J is mocking Bozo berman.
This case involves an utterly routine and entirely correct application
of prosecution history estoppel against a litigant with ever-shifting positions.
The patents-in-suit, U.S. Patent Nos. 6,153,069 (the “‘069 patent”)
and 6,413,411 (the “‘411 patent”), claim a blood glucose monitoring system with a safety check that operates by sequentially performing two essential functions, both added by amendment to overcome the prior art: first, “converting” two different readings of electric current to two different measurements of analyte (blood glucose) concentration, and then “comparing” those concentration measurements to confirm that they are within a prescribed percentage of each other. Pharma Tech concedes that LifeScan’s accused OneTouch® system does not perform either junction; it never creates different concentration measurements and it compares readings of electric current instead of concentrations.
Pharma Tech purchased the patents after they expired for $250,000,
apparently to sue LifeScan. Its complaint outlandishly seeks damages of $400– $700 million. Initially, Pharma Tech disclaimed any intention to assert infringement under the doctrine of equivalents (“DOE”), both in pre-motion correspondence and then in its response to LifeScan’s motion to dismiss, leaving only its claims of literal infringement. But scientific evidence that LifeScan proffered to Pharma Tech at the outset of the case unequivocally established thatm Case: 19-1163 Document: 31 Page: 12 Filed: 02/27/201
2
there is no literal infringement because LifeScan’s One Touch system does not“convert” two different current readings to two different concentrations and does not “compare” concentration measurements to each other. Rather, it performs a safety check by comparing current readings, not concentrations. When Pharma Tech finally examined scientific evidence that had been available to it for eight-plus months, it stipulated to dismiss its literal infringement claims with prejudice. Pharma Tech then resurrected the DOE claims it previously had abandoned. But the DOE is not available for the “converting” and “comparing”
concentration limitations because those limitations were added by amendment during prosecution and the applicant relied on the amendments in arguments distinguishing the prior art. Both forms of prosecution history estoppel, amendment-based and argument-based, bar any DOE claims. LifeScan moved to dismiss Pharma Tech’s allegations of infringement under the DOE and the district court granted the motion.
The district court’s decision was correct. The key limitations, for
“converting” two different current readings to two different
concentration measurements and “comparing” those concentrations, were added by amendment in response to a rejection. That created a presumption of surrender under Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1365 (Fed. Cir. Case: 19-1163 Document: 31 Page: 13 Filed: 02/27/2019
3
2003) (en banc), and the OneTouch system is in the territory that was
presumptively surrendered. As the district court found, the Festo presumption is unrebutted. Amendment-based estoppel accordingly bars Pharma Tech’s DOE claims. As the district court also found, argument-based estoppel also bars Pharma Tech’s DOE claims. The applicants characterized “the[ir] present invention,” in contrast to the prior art, as a system that performs two essential functions, “converting” two different current readings to two different concentration measurements and “comparing” those concentrations. This was a clear and unmistakable surrender of systems (like the OneTouch system) that do not do this.
Pharma Tech responds to a perfectly clear prosecution history record
by offering an opaque blend of distortions, distractions and incorrect arguments.
Most strikingly, its main arguments on appeal are afterthoughts that were never raised in the district court and accordingly are waived. What remains is a mishmash of arguments that are contrary to case law, at odds with objective evidence from the prosecution history and not supported by factual evidence. In the end, this is an utterly simple, indeed frivolous, case. The OneTouch system does not practice two limitations that were added by amendment to avoid the prior art and that provided the basis for arguments used to obtain allowance. Basic estoppel principles of prosecution history estoppel bar Case: 19-1163 Document: 31 Page: 14 Filed: 02/27/2019
4
Pharma Tech from recapturing what the applicants surrendered in the PTO.
Pharma Tech recognized this before motion practice when it told LifeScan
that it would not assert the DOE. Pharma Tech recognized this again in its response to LifeScan’s dismissal motion, when it told the district court that it would not assert the DOE. The district court recognized this in granting summary judgment to LifeScan. The judgment of noninfringement should be affirmed.
AI
