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Judge Kills IP Claim, Blames Lawyer
The Recorder
June 26, 2008
Finding that an in-house lawyer tried to deceive the U.S. Patent and Trademark Office, a federal judge ruled Abbott Laboratories' patent unenforceable.
Illinois-based Abbott had sued Bayer and other pharmaceutical makers over a patent on strips used by diabetics to test their blood. Judge William Alsup of the Northern District of California made a finding of inequitable conduct on Tuesday, saying that the patent in question had been obtained only because Abbott attorney Lawrence Pope had withheld key information in connection with the patent filing.
"The withheld evidence here was richly material," Alsup wrote in the 54-page ruling. "And, intent to deceive, not just to withhold, was clearly in the mind of attorney Pope, hard as it is to so conclude as to a professional."
Pope declined to comment, referring questions to Abbott Labs, whose spokesperson did not return calls and an e-mail for comment.
Patent defendants often attempt an inequitable conduct argument but are rarely successful, said Michael Barclay, a patent litigator from Wilson Sonsini Goodrich & Rosati who was not involved in the case.
"You have to prove that something that happened in the patent office was improper, and not only that, but it has to be done with a high level of bad intent," Barclay said. "It's very hard to prove that level of intent."
Beginning in 2004, Abbott sued Bayer, Becton, Dickinson and Company and Roche for infringing on its patents with their disposable test strip products. Roche settled on the eve of the bench trial, which began May 27, while Bayer and Becton stayed in, represented by Morrison & Foerster and Ropes & Gray, respectively.
Rachel Krevans, who led the trial team for MoFo with Wesley Overson, declined to comment publicly, but Bayer spokeswoman Susan Yarin said the company was pleased.
"Obviously, we won, and we're gratified by the decision of the court," she said.
A Ropes & Gray lawyer on the case did not return phone calls for comment. A spokesman for Baker Botts, which represented Abbott Labs, referred questions to the company.
With Tuesday's ruling, Bayer is now in the clear, having previously invalidated another Abbott patent on summary judgment.
Becton still faces a trial with respect to another related Abbott patent.
The patent at issue in Alsup's ruling, known as the '551 patent, was rejected 12 times by the patent office over a period of 14 years, starting in 1983 with a company called Medisense. All but one of those rejections cited U.S. Patent No. 4,545,382, known as the '382 patent, which had been issued previously to the same researchers.
After Abbott bought the company in 1996, it assigned in-house patent lawyer Pope, now counsel at Mayer Brown in Chicago, to work on the '551 patent.
Along with an Abbott researcher, Pope argued that '551 was novel because it didn't require a protective membrane between the sensor on the strip and the blood like the '382 patent had. Even though the '382 patent had stated it was "optionally, but preferably" to be used with the membrane, Pope argued that was patent law speak for "required."
But Alsup found that the company had strenuously argued to European patent officials just the opposite -- that the protective membrane was optional, not required -- in defending the European equivalent of the '382 patent. Alsup ruled that Pope intentionally kept that material information from the patent examiner.
"If concealment of extrinsic information as close to the heart of the prosecution as was involved here is allowed to pass, then we would in effect be issuing licenses to deceive patent examiners in virtually all cases," Alsup wrote.
The judge found Pope, Abbott and the researcher Gordon Sanghera guilty of inequitable conduct, making the '551 patent unenforceable.
Alsup also invalidated some of the patent's claims.
Pope had a chance to explain his side. After initial reluctance, his company put the lawyer on the stand, where he claimed he'd been trying to secure a strong patent for his employer and had no motive to conceal anything and undermine the patent's enforceability. According to the ruling, he also testified that patent prosecutors often write specifications broadly early on, so he had read "optionally, but preferably" as an overblown way of saying "optionally, but always."
"Attorney Pope," wrote Alsup, "did not prove to be a convincing trial witness."
