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U.S. District Court Judge Joseph Farnan wiped out Lifescan Inc.’s $5.86 million jury award against rival Home Diagnostics Inc. after finding two crucial instances in which the evidence failed to sufficiently support the jury’s verdict of patent infringement. Farnan acted on Home Diagnostics post-trial request to overturn the jury verdict, which was the product of a nine-day trial in Delaware over the alleged infringement by Home Diagnostics of a patent for blood-sugar monitors used by diabetics. Farnan’s decision zeroes out the jury verdict and ends the litigation, unless Lifescan, a Johnson & Johnson company, decides to appeal. A spokesman said the company was “disappointed” at Farnan’s ruling, but didn’t yet know if an appeal would be filed. “The ruling is a win for … diabetics worldwide,” Jim Corbett, Home Diagnostics’ chief executive, said in a statement. The claim is based on the fact that Diagnostics meters are less expensive than competitors. The accurate monitoring of blood sugar is essential for diabetics fighting to keep their disease in check and to prolong their lives. Milpitas, Calif.-based Lifescan sued Fort Lauderdale, Fla.-based Diagnostics in 1996, claiming the private company sold Prestige glucose measuring meters using technology patented by Lifescan. Another private company, MIT Development Corp. of Wilton, Conn., was also a defendant. MIT is Diagnostics manufacturing partner. The jury found in favor of Lifescan under the doctrine of equivalents, meaning that neither Prestige meter at issue literally infringed the patent. The doctrine of equivalents, according to Farnan, holds that “the element of the accused device must perform substantially the same function, in substantially the same way, to achieve substantially the same result” as the patent-holder’s device. “The primary inquiry in applying the doctrine of equivalents,” Farnan continued, “is whether ‘the differences between the claimed invention and the accused device are … insubstantial.’” Farnan ruled in a 74-page opinion that the jury’s finding of equivalence wasn’t supported by substantial evidence, which overturns the jury’s verdict. The ruling concerned technology that initiated a predetermined time sequence, known as step or element “e,” in the glucose meters. Step e didn’t literally infringe Lifescan’s patent, so the jury would have to find equivalent infringement. This means that Lifescan would have had to present “particularized testimony and linking argument as to why the function, way and result of the Prestige meter’s operation is substantially the same as that claimed in element e.” After reviewing plaintiff’s experts testimony and plaintiff’s arguments, “the court concludes that plaintiff failed, as a matter of law, to present the particularized testimony and linking argument” required to support the jury’s finding of equivalent infringement, Farnan wrote. Farnan also overruled another jury finding that out-of-meter testing using a Prestige machine violated Lifescan’s patent through the doctrine of equivalents. The out-of-meter testing involves element e, which Farnan already decided didn’t present either a literal or equivalent infringement. “Accordingly, the court concludes that substantial evidence does not support the jury’s verdict that the out-of-meter testing use of the Prestige meter infringes,” Farnan wrote. The case is Lifescan Inc. v. Home Diagnostics Inc. and MIT Development Corp., CA No. 96-597.

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