Urologix, Inc. v. Prostalund Ab, 02-C-0318.
| Decision Date | 07 April 2003 |
| Docket Number | No. 02-C-0318.,02-C-0318. |
| Citation | 256 F.Supp.2d 911 |
| 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 |
A. Sidney KATZ, Chicago, IL, James Volling, Minneapolis, MN, Robert Briesblatt, Chicago, IL, for Plaintiff.
Kathleen Donius, Milwaukee, WI, Doris Johnson Hines, Washington, DC, Willem Schuurman, Austin, TX, Christopher Banaszak, Milwaukee, WI, Stephen Hash, Austin, TX, for Defendants.
DECISION AND ORDER
On October 10, 2002, I granted defendants' motion for summary judgment and held 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 order.1
To explain my ruling on Urologix's motion to vacate, I must recount some of the history of the prosecution of the '004 patent. This history appears in more detail in my October 10, 2002 decision ("October 2002 decision").
In my October 2002 decision, I found the '004 patent invalid under 35 U.S.C. § 102(d) because the application that matured into the '004 patent, application serial No. 667,847 (the "'847 application"), and its parent application, serial No. 438,741 (the "'741 application"), were not copending. When the '741 application was filed, the applicants claimed a priority filing date under 35 U.S.C. § 120 based on an earlierfiled French application (the "French application"). On November 21, 1990, the United States Patent and Trademark Office ("PTO") issued an Office Action in the '741 application requiring a response from applicants within a three-month period. No response was filed; thus, the '741 application became abandoned.
After abandonment, the applicants filed the '847 application as a continuation-inpart of the '741 application. The '847 application also claimed a priority filing date under 35 U.S.C. § 120 based on the French application. However, because the '741 application was abandoned before the '847 application was filed, copendency between the '741 application and the '847 application did not exist. Hence, priority could not be claimed based on the French application.2 The French application, therefore, became invalidating prior art under section 102(d).
This issue of copendency was raised in a prior action in this district when the '004 patent was owned by Technomed Medical Systems, Inc. ("Technomed"). See Technomed Med. Sys., Inc. v. Dornier Med. Sys., Inc., No. 98-C-345, slip op. at *2 (E.D.Wis. Jul. 17, 1998) (Clevert, J.) (hereinafter, "Technomed"). Technomed was represented by the same attorneys who represent Urologix here. The defendant in that action, Dornier Medical Systems, Inc., argued, among other things, that the '004 patent was invalid due to a failure of copendency and presented evidence on this issue at a preliminary injunction hearing. The court did not decide the patent's validity, but did find in addressing Technomed's motion for a preliminary injunction, that Technomed had a reasonable likelihood of successfully defending against the invalidity charge. Technomed, slip op. at 6. Soon after, the case settled.
On March 29, 2002, Urologix filed the instant case against Prostalund AB, Prostalund Operations AB, and Circon Corporation, a/k/a ACMI Corporation (collectively, "Prostalund") for infringement of the '004 patent. As discussed above, Prostalund filed a summary judgment motion arguing invalidity due to a failure of copendency. Urologix argued in response that the '004 patent was valid and that, if it was not, I should allow Urologix to petition the PTO to revive the '741 application so as to fix the failure of copendency. In my October 2002 decision, I found that the patent was invalid and declined to put off my decision to permit Urologix to petition the PTO because I found that "Urologix ha[d] known about the copendency problem since at least 1998 when the issue was raised in [the Technomed litigation], yet taken no action to remedy it." Urologix, 227 F.Supp.2d at 1041.
After my October 2002 decision issued, Urologix filed a PTO petition to revive the '741 application under 37 C.F.R. § 1.137(b) for the specific purpose of correcting the failure of copendency. (R. 143 Ex. 1.) A patent-holder can petition the PTO to revive an abandoned application and, thereby, correct a failure of copendency. See 35 U.S.C. § 41(a)(7). However, under 37 C.F.R. § 1.137(b), the entire period of delay "from the due date for the reply until the filing of a grantable petition" to revive must be "unintentional" and the petitioner's petition must include a statement to that effect. 37 C.F.R. § 1.137(b)(3). In evaluating these petitions, the PTO "relies upon the applicant's duty of candor and good faith and accepts the statement that 'the entire delay ... was unintentional' without requiring further information in the vast majority of petitions." Manual of Patent Examining Procedure ("MPEP") § 711.03(c)(III)(C) (8th ed.2001).
In its petition, Urologix argued to the PTO that "any abandonment of the '741 application before establishing copendency with the '847 application was unintentional, and therefore within the PTO's discretion to cure." (R. 143 Ex. 1.) In addition, contrary to my October 2002 decision, Urologix stated that "[i]t was not until receipt of the Courts' [sic] October 10, 2002 decision that the need to file this petition was noted." (Id.) In a footnote, Urologix mentioned the Technomed decision, but said that "[o]n the basis of th[e] decision, there was no need for the Applicants to take any action to address the alleged lack of copendency." (Id.) Hence, Urologix maintained before the PTO that the entire period of delay was unintentional because Urologix did not know of the copendency problem until October 2002. (Id.)
On November 19, 2002, the PTO granted Urologix's petition to revive. (R. 142 Ex. 2.) The PTO did not address the 1998 Technomed decision regarding the lack of copendency or my October 2002 decision, but only discussed the inadvertent failure in 1991 to maintain copendency during prosecution. Armed with this PTO decision, Urologix has returned to me to ask that I vacate my October 2002 order finding the '004 patent invalid.
The orderly administration of litigation requires that the finality of orders, even interlocutory ones, be reasonably certain. See Gould, Inc. v. United States, 67 F.3d 925, 930-31 (Fed.Cir.1995); Mendenhall v. Barber-Greene Co., 26 F.3d 1573, 1582 (Fed.Cir.1994); Rothner v. City of Chicago, 929 F.2d 297, 301 (7th Cir.1991). Thus, although the court may reconsider its interlocutory orders at "any time before the entry of judgment," Fed.R.Civ.P. 54(b), under the law of the case doctrine, courts generally should not reopen issues once decided, Agostini v. Felton, 521 U.S. 203, 236, 117 S.Ct. 1997, 138 L.Ed.2d 391 (1997); Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 815, 108 S.Ct. 2166, 100 L.Ed.2d 811 (1988) (); Creek v. Vill. of Westhaven, 144 F.3d 441, 446 (7th Cir.1998). Rothner, 929 F.2d at 301. "An exception exists where the court is `convinced that its prior decision is clearly erroneous and would work a manifest injustice.'" Agostini 521 U.S. at 236, 117 S.Ct. 1997 (quoting Arizona v. California, 460 U.S. 605, 618, n. 8, 103 S.Ct. 1382, 75 L.Ed.2d 318 (1983)). However, parties are expected to marshal all their arguments and evidence in opposition to a dispositive motion. Caisse Nationale de Credit Agricole v. CBI Indus., Inc., 90 F.3d 1264, 1270 (7th Cir.1996). The court will view "[b]elated factual or legal attacks ... with great suspicion." Id.3
As discussed, I ruled on Prosta-Lund's motion for summary judgment and found the '004 patent invalid due to a failure of copendency. This conclusion became the law of the case. Urologix now argues, however, that the later PTO decision corrected the failure of copendency and requires that I vacate my order. I therefore must determine whether the PTO decision makes my October 2002 clearly erroneous and manifestly unjust. I conclude that it does not.
Clear error is a high standard. The Seventh Circuit has explained that clear error "means more than just maybe or probably wrong; [the error] must ... strike [the court] as wrong with the force of a five-week-old, unrefrigerated dead fish." Parts & Elec. Motors. Inc. v. Sterling Elec, Inc., 866 F.2d 228, 233 (7th Cir.1988); accord Gindes v. United States, 740 F.2d 947, 950 (Fed.Cir.1984) ( ). Urologix's arguments do not show that my decision meets this standard.
Nothing Urologix has presented casts doubt on the correctness of my decision at the time it issued. The PTO decision does at the time. To the contrary, the PTO conclusion that there was correct in my conclusion that there was a failure, the' 004 patent was invalid.
Rather, Urologix argues that the PTO decision makes my October 2002 decision clearly erroneous now. However, in order for that to be the case, the PTO's revival of the '004 patent retroactively valid, not only for purpose of future litigation initiated before the lapse was cured and in which the patene's invalidity has already been determined.
However, it is not clear that the PTO decision has any effect in ongoing...
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