Merctec LLC v. Johnson & Johnson and Cordis

This is one of the early patent decisions of 2012 by CAFC, delivered on 01-03-2012. In this case CAFC affirmed the award of Attorney fees ($3,873,865.01) under Sec 285 upon finding the case as “Exceptional”. CAFC also affirmed the District Court’s construction of the word “bonded” in Patent Numbers – US 7,128,753 and US 7,217,290.

Merctec LLC holds two patents (Patents-in-suit) directed towards “Surgical Devices”. It sued Cordis and Johnson & Johnson collectively for Infringement. The District Court construed the word “bonded” by considering the statements made by the inventor during the Prosecution. The inventor specifically stated that “the bonding material as mentioned in the claims is meant to include a non-flowing, non-adherent and heat bondable material which is bonded to an implant by application of heat”. The district court construed the claims with reference to the Prosecution History and decided in favor of Johnson & Johnson for non-infringement. Upon finding non-infringement, the District Court also found the allegations put forth by the Plaintiff’s as baseless and non-persuasive and awarded $4 Million as attorney and expert fees. Specifically the District Court finding of Litigation Misconduct by Merctec LLC reveals that it:

1.      Misrepresented both law and claim construction ultimately adopted by the court; and

2.      Failed to meet minimal standard of reliability

The CAFC appreciated the finding of Litigation Misconduct by the District Court and affirmed the award of attorney fees.

Source: http://www.ipo.org/AM/Template.cfm?Section=Federal_Circuit_Opinions&template=/CM/ContentDisplay.cfm&ContentID=31944

Strategies for Pre and Post-Grant Oppositions in US and Europe

During the course of my work as a legal intern at Lowe Hauptman Ham Brenner LLP Alexandria VA, I was instructed to assist in preparing a presentation on the title “Strategies for coordinating pre and post grant oppositions in the United States with European Practices” for the Global IP conference in New Delhi, India. Unfortunately the visit to India was cancelled due to the time constraints. I thought the presentation is worthy of sharing! Hope this helps!

Here is the slide-share link http://www.slideshare.net/sriharshavasireddy/pre-and-post-grant-strategies-in-us-and-europe

Extended Pilot Program by USPTO

            The United States Patent and Trademarks Office introduced a new Pilot Program (Extended Missing Parts Pilot Program) after considering various written comments by the public. This new program allows a non-provisional applicant to seek for a 12 month extension to pay the search fee, examination fee, any excess claim fees and the surcharges if any.

Effective Date – 16^th December 2011 to 31^st December 2012.

Eligibility Criteria -

1. The applicant must submit a certification and request to participate.
2. The application must be an original non-provisional utility or plant application.
3. The non-provisional application must claim the direct benefit of a prior provisional application filed within 12 months.
4. The applicant must not have filed a non-publication request.

Benefits -

This new program facilitates the applicant to commercialize the product for a long duration, he can also find out some low cost possibilities to protect his invention during this extended period. It benefits the public by adding publications to the body of prior art. Finally it reduces the workload of the USPTO by removing the non-provisional applications for which the applicant later decides not to pursue examination.