Declarations from Inventors of Prior Art Could Create Genuine Dispute over Motivation to Combine - Ivera Medical Corp. v. Hospira, Inc.

McDermott Will & Emery

Addressing the issue of obviousness, the U.S. Court of Appeals for the Federal Circuit held that the district court erred in granting summary judgment of invalidity because plaintiff patentee established a genuine issue of material fact over whether one of ordinary skill in the art would have been motivated to combine the cited prior art. Ivera Medical Corp. v. Hospira, Inc., Case Nos. 14-1613, 14-1614 (Fed. Cir., Sept. 8, 2015) (Reyna, J.).

Ivera sued Hospira alleging infringement of three patents relating to a cleaning device for a medical implement, such as catheters and luer ports. The claimed invention of the asserted patents related to caps that include a means for venting, which inhibits pressure buildup and allows for evaporation of a cleaning agent. The district court granted summary judgment, finding the asserted patent claims obvious under § 103. According to the district court, although the prior art did not disclose the vent limitations, a person of ordinary skill would not need the benefit of hindsight to recognize the benefit of adding a vent to relieve possible pressure on the inside of the cap. Ivera appealed.

On appeal, the Federal Circuit held that the record evidence established a genuine dispute over whether one of ordinary skill in the art would have been motivated to add a vent to the disinfecting cap as described in the prior art. In so holding, the Court looked at declarations from inventors of cited prior art references that were not considered during parallel inter partes reexamination proceedings, noting that Hospira did not challenge Ivera’s reference to these declarations at the summary judgment stage before the district court. The Court further remarked that while “statements of an inventor are not controlling as to the content of a patent application, Hospira [did] not challenge [the inventor’s] assertion that he is a person of ordinary skill.” The Court found that these declarations indicated that a person of ordinary skill would have desired fluid-tight disinfecting caps to retain the cleaning agent included within the cap. The parties also disputed the appropriate interpretation of a portion of a prior art reference. The Federal Circuit explained that the prior art reference was not clear on which interpretation was correct and because “neither side point[ed] to any other evidence favoring one interpretation,” this was another factual dispute that the Court must resolve in Ivera’s favor at the summary judgment stage.

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