Urologix, Inc. v. Prostalund Ab, 02-C-0318.
| Citation | 227 F.Supp.2d 1033 |
| Decision Date | 10 October 2002 |
| Docket Number | No. 02-C-0318.,02-C-0318. |
| Parties | UROLOGIX, INC., Plaintiff, v. PROSTALUND AB, Prostalund Operations AB, and Circon Corporation a/k/a ACMI Corporation, Defendants. |
| Court | U.S. District Court — Eastern District of Wisconsin |
Robert Briesblatt, for Plaintiff.
Kathleen S. Donius, Doris Hines, Willem G. Schuurman, for Defendants.
DECISION AND ORDER
Plaintiff Urologix, Inc. ("Urologix") alleges that defendants ProstaLund AB, ProstaLund Operations AB, and Circon Corporation a/k/a ACMI Corporation (collectively, "ProstaLund") infringe U.S. Patent No. 5,234,004 (issued Aug. 10, 1993) (the "'004 patent"), entitled "Method and Apparatus for the Surgical Treatment of Tissues by Thermal Effect, and in Particular the Prostate, Using a Urethral Microwave-Emitting Probe Means" and U.S. Patent No. 5,509,929 (issued Apr. 23, 1996) (the "'929 patent"), entitled "Urethral Probe and Apparatus for the Therapeutic Treatment of the Prostate by Thermotherapy," both assigned to Urologix. On July 24-25, 2002, I heard arguments on claim construction pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-90, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), and on Urologix's Motions for a Preliminary Injunction and ProstaLund's Motion for Summary Judgment of Invalidity of the '004 patent under 35 U.S.C. § 102(d). This decision addresses the latter motion. ProstaLund argues that the '004 patent's foreign priority reference, French publication 88 15126, is prior art under section 102(d) because of a failure of copendency under 35 U.S.C. § 120 between the '004 patent and its parent application.
Summary judgment is proper if the evidence shows that "there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). The mere existence of some factual dispute does not defeat a summary judgment motion; there must be a genuine issue of material fact. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). However, when the evidence presented shows a dispute over facts that might affect the outcome, summary judgment is precluded and must be denied. See id.
The moving party has the initial burden of demonstrating that it is entitled to summary judgment. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Once the movant's burden is met, the nonmoving party must "go beyond the pleadings" and point to specific genuine issues of material fact. See Fed.R.Civ.P. 56(e); see also Celotex, 477 U.S. at 322-23, 106 S.Ct. 2548.
In evaluating a motion for summary judgment, the court must draw all inferences in a light most favorable to the nonmoving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). To prevail on a motion for summary judgment of invalidity of a patent, the movant must prove invalidity by clear and convincing evidence. See Anderson, 477 U.S. at 248, 106 S.Ct. 2505.
A party applying for a patent must comply with the applicable rules established by Congress and the United States Patent and Trademark Office ("PTO"). The applicant must be "vigilant and active" in complying with the conditions for obtaining a patent. Woodbury Patent Planing-Mach. Co. v. Keith, 101 U.S. 479, 485, 25 L.Ed. 939 (1879). The applicant has the burden of ensuring that papers are filed timely and of inquiring into potential problems during the application process. See In re Holland Am. Wafer Co., 737 F.2d 1015, 1018-19 (Fed.Cir. 1984) (); In re Swissco Foods Ltd., 25 USPQ2d 1552, 1553 (Comm'r of Patents & Trademarks 1992) (same). And although the PTO may notify applicants about irregularities, it has no obligation to do so. See In re Patent No. 4,461,759, 16 USPQ2d 1883, 1883 (Comm'r of Patents & Trademarks 1990).
Two sets of rules regarding the application process are relevant to the question of whether the '004 patent is invalid: (1) the requirements for obtaining the benefit of an earlier filing date based on a parent application, and (2) the rules governing the time to respond to an Office Action of the PTO. I discuss these provisions separately.
Generally, a patent application is considered filed on the date when the specification and any drawings are filed with the PTO. 37 C.F.R. § 1.53. However, under 35 U.S.C. § 120, a U.S. patent application may obtain the filing date of an earlier-filed U.S. application if, inter alia, it is filed "before the patenting, abandonment, or termination of proceedings on the first application" and the two applications have the same inventor(s). Id. § 120. Thus, in order for the filing date of an earlier application to be claimed as the filing date of a later filed application, the later one must be pending in the PTO at the same time as the earlier one. This requirement is referred to as the "copendency requirement." A U.S. patent also may obtain the filing date of a corresponding, earlier-filed foreign patent application if the U.S. application is filed within one year of the filing date of the foreign application. See id. § 119.
Title 35, U.S.C. § 133 establishes the time periods for responding to communications from the PTO:
Upon failure of the applicant to prosecute the application within six months after any action therein, ..., or within such shorter time, not less than thirty days, as fixed by the Commissioner in such action, the application shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Commissioner that such delay was unavoidable.
Id. § 133 (emphasis added). The Commissioner has established three months as the time period for responding to a PTO Office Action on the merits; this period is commonly called the "shortened statutory period for response." See Manual of Patent Examining Procedure ("MPEP") 710.02(b) Shortened Statutory Period: Situations Where Used, rev. 6 (1987) ( ). However, upon request and payment of a fee, a party may extend the time to respond by up to an additional three months. 37 C.F.R. § 1.136(a); see also 35 U.S.C. § 41(a)(8) (). If a party fails to respond within the time allowed, the application is considered abandoned. 35 U.S.C. § 133. MPEP § 711.04(a).
On November 21, 1988, Gerard Hascoet, et al. (the "Applicants") filed a patent application in France, French Publication No. 88 15126 ("1988 French publication"). On November 17, 1989, the Applicants filed a corresponding U.S. patent application, serial No. 438,741 (the "'741 application"), claiming a priority under 35 U.S.C. § 119 to the 1988 French publication. Based on the priority claim, the '741 application obtained an effective filing date of the 1988 French publication, November 21, 1988. On November 21, 1990, the PTO issued an Office Action in the '741 application requiring a response from the Applicants. The parties disagree as to how much time the Applicants had to respond to the Office Action. However, it is undisputed that no response was filed, and at some point, the '741 application became abandoned. The parties dispute when the '741 application actually became abandoned. The PTO had previously initiated several other Office Actions on the '741 application before it became abandoned; and the parties do not dispute that the time period for responding to each of these was three months. On March 12, 1991, the Applicants filed U.S. patent application serial No. 667,847 that matured into the '004 patent. The '004 patent claims to be a continuation-in-part ("CIP") of the '741 application and thereby claims an effective filing date of November 21, 1988, the filing date of the 1988 French publication.1
In order for the '004 patent to be valid, it must be entitled to the filing date of the corresponding 1988 French publication. It is undisputed that its parent, the '741 application, is entitled to the filing date of the 1988 French publication. Thus, the application for the '004 patent must have been filed "before the ... abandonment" of the '741 application. See 35 U.S.C. § 120. The question, therefore, is whether the '004 patent application was filed before the '741 application became abandoned. This depends on when the '741 application became abandoned.
ProstaLund argues that the '741 application was abandoned as of midnight February 22, 1991, when the Applicants failed to respond to the PTO Office Action after three months. Urologix argues that the Applicants had more than three months to respond, or, that at least there is a genuine issue of fact as to whether this was so. Alternatively, Urologix also argues that, even if the Applicants had only three months to respond, they obtained an extension of time from the PTO, or that the PTO waived the requirement that they obtain an extension.
As stated above, the standard period for responding to an Office Action is three months. See MPEP § 710.02(b). In the present case, the record confirms that the Applicants had three months to respond to the November 21, 1990 Office Action. The Table of Contents on the cover of the prosecution history of the '741 application indicates that there was a three-month response period. (R. 62 Ex. F.) The cover...
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Urologix, Inc. v. Prostalund Ab, 02-C-0318.
...that plaintiff Urologix's U.S. Patent No. 5,234,004 (the "'004 patent") is invalid under 35 U.S.C. § 102(d). Urologix, Inc. v. Prostalund AB, 227 F.Supp.2d 1033 (E.D.Wis.2002). Urologix has now filed a motion pursuant to Fed.R.Civ.P. 54(b) requesting that I vacate my prior I. BACKGROUND To ......
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