Delaware Patent Litigation Report : Delaware Intellectual Property Lawyer & Attorney : Morris James Law Firm : Delaware Patent Litigation Report

The case involved patented technology relating to medical devices, in particular, a safety catheter.  The jury returned a verdict finding infringement under the doctrine of equivalents of three of six asserted claims of the patent-in-suit, but also finding that only one of the infringed claims was valid.  The other claims were found invalid for obviousness. Both parties moved for judgment as a matter of law or a new trial, and submitted competing proposals for permanent injunctive relief and the defendants filed an alternative request that any such injunction be stayed pending appeal.  The Court was not persuaded that the claim the jury found valid was in fact obvious.  The Court reasoned that, in addition to secondary evidence of non-obviousness, a genuine factual dispute existed and the record contained sufficient evidence from which a jury reasonably could find that the prior art did not disclose a particular element of the claim.  The Court also upheld the jury’s finding that the claims were not invalid for lack of an adequate written description because substantial evidence supported the finding.  Similarly, the Court was not persuaded that the jury incorrectly found infringement under the doctrine of equivalents, reasoning, in part, that the Court’s claim construction did not prohibit indirect attachment of one of the claimed elements.  As to obviousness, the Court reasoned that the record contained clear and convincing evidence in the way of testimony and prior art to uphold the jury’s invalidity finding.  The Court adopted the defendants’ proposed permanent injunction which included a “sunset” provision to allow time for a non-infringing replacement.  The case was tried in November 2010.  Post-trial motions were filed in January 2011, with oral argument in February 2011.