Streck, Inc. v. Research & Diagnostic Systems, Inc.
665 F.3d 1269
| Fed. Cir. | 2012Background
- Streck sued R&D for infringing three Streck patents on hematology control compositions and methods.
- R&D counterclaimed for declaratory judgment of invalidity and noninfringement.
- District court (Nebraska) granted partial summary judgment on written description and enablement issues and dismissed invalidity counterclaims to unasserted claims.
- Jury found R&D did not prove priority by clear and convincing evidence and awarded Streck damages for infringement.
- PTO Interference between Streck and R&D addressed priority; Board found R&D first to invent, later reversed with Streck priority in §146 proceeding, which this court later resolved.
- Court affirmed district court’s permanent injunction restricting R&D’s hematology control products pending expiration of the patents-in-suit.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Jurisdiction over unasserted claims | Streck contends district court properly limited to asserted claims | R&D contends jurisdiction over unasserted claims existed | No jurisdiction over unasserted claims; affirmed dismissal on MedImmune-totality grounds. |
| Written description sufficiency | Streck argues specification describes true reticulocytes and analogs | R&D argues lack of description for true reticulocytes | Written description satisfied as matter of law. |
| Enablement of true reticulocytes in integrated control | Streck contends enablement shown; analogs and true reticulocytes operate similarly | R&D argues undue experimentation required | Enablement affirmed; no reasonable jury could find lack of enablement. |
| Priority and evidentiary rulings | Priority resolved against R&D; companion §146 ruling governs | R&D challenges evidentiary rulings and priority presentation | Priority ruling affirmed; collateral estoppel applicable; evidentiary challenges rejected. |
| Scope of permanent injunction | Injunction tailored to upheld infringing products; not overbroad | Injunction overly broad beyond adjudicated products | Injunction affirmed as properly tailored and not overbroad. |
Key Cases Cited
- Gen-Probe Inc. v. Vysis, Inc., 359 F.3d 1376 (Fed. Cir. 2004) (declaratory judgment standards and case-or-controversy analysis)
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (S. Ct. 2007) (rejected strict reasonable apprehension test for jurisdiction)
- Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (written description requires possession as of filing; en banc decision)
- In re Wands, 858 F.2d 731 (Fed. Cir. 1988) (enablement factors and undue experimentation)
- Automotive Technologies for the Auto. Side-Impact Sensors, 501 F.3d 1274 (Fed. Cir. 2007) (enablement when multiple distinct species claimed; need for disclosure of novel aspects)
- i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) (injunction and remedy standards; deference to district court on facts)