I agree that it would seem more logical to rule on the IC first, but apparently the judge does not see it our way. That may be Insmed's fault to a certain extent. If you go back and read the judge's ruling after the Markman Hearing (available on Tercica's website in a PR released July 6th) the judge makes it very clear that Insmed brought a motion for summary judgement on the ivalidity of the '151 patent on the grounds of prior art by Maack and Somner. The judge denied the motion, and in doing so specifically stated that Insmed presented no evidence to support their position ... other than their attorney's arguments, and attorney's arguments are not evidence. That sounds to me like Insmed may have dropped the ball.
Apparently, some time later Insmed put forth the defense of inequitable conduct in an attempt to have the '151 declared unenforceable. Exactly when that occurred I do not know. The first I saw of it was in a court document filed in October, and it appeared the judge took a dim view of having it put on the table at such a late date. That leads me to believe the IC may have been made an isssue by Insmed as a fallback position just prior to trial, but I certainly do not know that for sure. However, if that was the case, it might explain why the judge decided to let the case go to the jury before any IC hearing. It may have been that the only question before the court at that time was the one on prior art, and she had already ruled on that. (The Insmed brief on IC wasn't even filed until AFTER the case had gone to the jury.) If that indeed was the case and I was the judge, I would be more than a little pissed for having been put in that position.
I would think though it may be a "no harm, no foul" situation in that IF the judge grants the IC motion ... which I personally doubt ... she can set aside the infringement issues with the '151 patent and adjust any royalties accordingly. If, on the other hand, she denies the IC motion Insmed now at least has put all they have into the record for an appeal.
I think we have to keep two things in mind during the next few weeks. One is that we do not know all that goes on in the court. The other is that the court (any court) does not rule on any question that does not come before it. In theory, the judge may agree with us but she can only rule on what has been brought before the court by either the plaintiffs or defendants. At the Markman Hearing Insmed had only contended prior art (which the judge rejected). The IC motion apparently came later.
AI
