Creative Compounds, LLC v. Starmark Laboratories, 651 F.3d 1303

Creative and Starmark own competing creatine salt patents: Creative's '273 patent (dicreatine malate) and Starmark's '373 patent (creatine salts with a dicarboxylic acid).
The district court granted summary judgment that the '373 patent is valid and infringed, and dismissed/denied issues regarding the '273 patent' jurisdiction.
Creative mailed letters to industry about its '273 notice and included counsel's opinion; SAN's customers allegedly received letters about the '373 patent and prior Haynes work.
Starmark obtained the '373 patent via SAN and Boldt; Creative alleged priority and potential invalidity based on preexisting ideas and other references.
The district court found lack of jurisdiction over the '273 patent and granted summary judgment of invalidity for the '273 patent, which this court vacates; leave to amend denial upheld.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Burden of proof for priority invalidity	Creative urged preponderance of the evidence standard for priority between co-pending patents.	Starmark argued clear and convincing standard applies.	Clear and convincing standard applies; Environ/Slip Track distinctions do not apply here.
Validity under 102(g)(2) for prior invention	Cornelius conceived the subject matter prior to Boldt with evidence like an email order.	No genuine issue of prior conception or diligence; email inadequate.	No genuine issue of material fact; patent not invalid under 102(g)(2).
Validity under 102(f) derivation	Cornelius communicated prior conception to the patentee; derivation possible.	No corroborated evidence of communication or knowledge; sole testimony insufficient.	No genuine issue; derivation not shown; patent not invalid under 102(f).
Validity under 102(e) by prior art reference	Prior art reference discloses the invention; should invalidate.	Need detailed linkage of each claim element to prior art; asserted reference alone insufficient.	No genuine issue; prior art does not render '373 invalid under 102(e).
Subject matter jurisdiction over the '273 patent	No case or controversy with Starmark regarding the '273 patent; jurisdiction lacking.	Dispute over competing patents shows substantial controversy and potential §291 interference.	Lacked declaratory judgment jurisdiction over the '273 patent; vacated invalidity ruling as to '273.

Tokai Corp. v. Easton Enters., 632 F.3d 1358 (Fed. Cir. 2011) (clear and convincing standard for validity under § 282)
Environ Prods., Inc. v. Furon Co., 215 F.3d 1261 (Fed. Cir. 2000) (preference for preponderance standard in priority when co-pending subject matter is identified)
Slip Track Sys., Inc. v. Metal-Lite, Inc., 304 F.3d 1256 (Fed. Cir. 2002) (preponderance standard in § 291 interference context when priority exists)
Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352 (Fed. Cir. 2004) (limits on applying priority standard when common subject matter not identified)
Schumer v. Laboratory Computer Sys., Inc., 308 F.3d 1304 (Fed. Cir. 2002) (duty to identify claim elements in invalidity analysis; not just bare references)
SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107 (Fed. Cir. 1985) (patentee bears burden to prove infringement by preponderance)
Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354 (Fed. Cir. 2004) (burden of proof for validity remains clear and convincing)
Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. _ (Supreme Court 2011) (affirmed clear and convincing standard for invalidity)