Anticipate This!™ | Patent and Trademark Law Blog

Go Medical Industries PTY, LTD, et al. v. Inmed Corporation (doing business as Rusch), et al.

Posted in Opinion Commentary by Jake Ward on November 5, 2006

Patent Drawings That Do Not Define the Precise Proportions of Elements May Not Be Relied on to Show Such Dimensions if the Specification is Completely Silent on the Issue.  

(Fed. Cir. 2006, 05-1241)

Asserted claims in Go Medical’s U.S. Pat. No. 4,652,259 (the 259 patent) were found invalid as anticipated at district court (N.D. Ga.) in Go Medical’s infringement suit against Inmed.  On appeal to the CAFC, Go Medical challenged the summary judgement on the patent claims (among other issues not discussed herein). 

The technology at issue relates to urinary catheters that reduce the likelihood of urinary tract infections resulting from bacteria pushed into the bladder during catheter insertion.  In particular, the asserted claims of the 259 patent requires the catheter sheath to be inserted “about 1.5 cm” or up to a “known position of maximum pressure.”  The 259 patent claimed priority from an applciaiton filed in 1979, and the cited reference was an article written in 1982 that Go Medical conceded would otherwise anticipate.   The issue was whether the 259 application had met 35 U.S.C. § 112, ¶ 1 requirements affording it an earlier priority date than the cited reference?

A patent application for an invention disclosed in a previously-filed application in a manner that satisfies all the requirements of 35 U.S.C. § 112 is entitled to the benefit of the earlier filing date. 35 U.S.C. § 120.  A CIP application “contains subject matter from a prior application and may also contain additional matter not disclosed in the prior application.”  Any new subject matter does not receive the benefit of the earlier priority date.

In determining whether the best mode requirement of 35 U.S.C. § 112, ¶ 1 is met, the court first determines whether a particular mode of practicing the invention subjectively considered to be superior to all other embodiments at the time the priority application was filed?  If it was, the court then asks whether a sufficient disclosure allowing others to practice that best mode was provided in the priority application?

In this case, the CAFC concluded that the invention of the 259 patent was not disclosed in the 1979 application in a manner that satisfied the best mode requirement.  There was no dispute that the claimed length of 1.5 cm was not expressly disclosed, nor were the drawings sufficient.  Patent drawing do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.  Therefore, Go Medical could not claim the priority date of the 1979 application and the summary judgment of patent invalidity was affirmed.

JW Note:  As to the licensing issues discussed in this opinion, the Patent Baristas have provided an excellent analysis here. 

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