Patent Law Practice Center

St. Jude: Double Patenting at the Federal Circuit

In the recent Federal Circuit case of St. Jude Medical v. Access Closure, the defendant Access Closure, Inc. (ACI) appealed several rulings made by the United States District Court for the Western District of Arkansas in favor of St. Jude Medical, the patentee-plaintiff. The rulings relate to three patents that St. Jude asserted against ACI, namely U.S. Patent No. 7,008,439 to Janzen et al., U.S. Patent No. 5,275,616 to Fowler, and U.S. Patent No. 5,716,375, also to Fowler.

St. Jude filed its complaint in the United States District Court for the Western District of Arkansas on October 22, 2008, alleging that ACI infringed various claims of the aforementioned patents. During the litigation, the district court issued a Markman order in which it construed various claim terms found in the Janzen patent, including “means for ejecting” and “ejecting mechanism.” Unable to resolve the dispute, the parties proceeded to trial before a jury.

The jury rendered a verdict that ACI had infringed claims 7 and 8 of the Janzen patent, but that claims 7, 8, and 9 of the Janzen patent were invalid for double patenting in light of the sibling ’498 patent. Implicit in the jury’s double patenting finding was the jury’s conclusion that claims 7, 8, and 9 of the Janzen patent were not patentably distinct from claim 7 of the sibling patent.

(more…)