729 F.3d 1369
Fed. Cir.2013Background
- This is a patent case where Access Closure, Inc. (ACI) appeals district court rulings in favor of St. Jude Medical, Inc. and St. Jude Medical Puerto Rico, LLC on Janzen ('439) and Fowler ('616, '375) patents related to sealing a vascular puncture.
- The district court applied the safe-harbor provision of 35 U.S.C. § 121 to protect the Janzen patent from double patenting invalidity, a ruling ACI challenges.
- Jury found ACI infringed the Fowler claims and that the Fowler claims were not obvious; jury found Janzen claims not patentably distinct from the sibling '498 patent, with the district court later applying § 121 to uphold validity.
- Restriction requirements and an election of species occurred in the grandparent application, leading to a line-of-demarcation concept central to consonance analysis under § 121.
- The Janzen patent ultimately contains both device and method claims, while the restricted grandparent and the sibling '498 patent involve different subset inventions, affecting consonance.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether § 121 safe harbor applies to the Janzen patent | ACI: consonance failed; safe harbor should not apply. | St. Jude: safe harbor protects divisional-like results; misalignment argued by ACI. | Safe harbor does not apply to Janzen. |
| Whether the election of species affected the line of demarcation | Janzen should cross the line because election of species altered demarcation. | Election of species is distinct from restriction and can affect line. | Election of species affected line of demarcation; foundational to consonance analysis. |
| Whether the Janzen patent and sibling '498 patent maintain consonance | Janzen and sibling maintain consonance with examiner’s restrictions. | They do not maintain consonance; results invalid for double patenting. | Janzen claims lack consonance with the grandparent/sibling; claims 7–9 invalid for double patenting. |
| Whether claim construction for 'means for ejecting' and 'ejecting mechanism' is moot | If valid, construction governs infringement. | Because Janzen is invalid for double patenting, construction moot. | Moot due to double-patenting invalidity finding. |
| Whether the Fowler patents are invalid for obviousness | Takayasu and Smiley render the claims obvious. | Takayasu/Smiley do not disclose the balloon-positioning feature; no a priori motivation to combine. | Fowler patents nonobvious; no clear evidence of invalidity. |
Key Cases Cited
- Gerber Garment Tech., Inc. v. Lectra Sys., Inc., 916 F.2d 683 (Fed. Cir. 1990) (consonance depends on line between restricted and reference patents)
- Boehringer Ingelheim Int’l GmbH v. Barr Labs., Inc., 592 F.3d 1340 (Fed. Cir. 2010) (safe harbor analysis includes consonance across patents)
- Geneva Pharm., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373 (Fed. Cir. 2003) (consonance required between restricted, reference, and challenged patents)
- In re Longi, 759 F.2d 887 (Fed. Cir. 1985) (double patenting framework and relevance to § 121)
- Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340 (Fed. Cir. 2009) (continuations and § 121 scope in consonance analysis)