Federal Circuit remands Abbott drug test patent suit

The US Court of Appeals for the Federal Circuit has ordered a new trial in a patent dispute between Abbott-subsidiary  Alere and patent monetisation company Rembrandt Diagnostics.

On Friday, April 10, the Federal Circuit  sided with Rembrandt and vacated a decision of the US District Court for the Southern District of California, after finding that the lower court had misinterpreted key terms of the patent at issue.

Rembrandt sued Abbott-subsidiary Alere for infringing US patent number 6,548,019—which covers devices for collecting and assaying biological fluid samples—through the sale of urine test cup products.

Before trial, Rembrandt stipulated to a judgment of noninfringement of claims 3–6, in light of the California court’s construction of a disputed claim limitation.

Then, during the trial, the California court construed another disputed claim limitation. The jury subsequently issued a verdict of noninfringement and no invalidity as to claim 10.

However, Rembrandt subsequently challenged the district court’s constructions of the two disputed claim limitations, while Alere cross-appealed, requesting that the Federal Circuit order a new trial on the validity of claim 10 if it remands for a new trial on infringement.

In its decision, the Federal Circuit concluded that the intrinsic evidence supports Rembrandt’s proposed constructions, leading the court to vacate the district court’s judgments and remand for further proceedings as to claims 3–6 and a new trial on both infringement and validity for claim 10.

The California court had erred in its claim construction on both counts, according to the Federal Circuit. It also held that the “jury instruction that included the district court’s construction was prejudicial and requires the verdict of noninfringement of claim 10 to be set aside”.

On Alere’s cross-appeal, the court said that, because it had determined that the district court’s construction of a limitation was erroneous, a new trial would be necessary to determine whether the asserted prior art anticipates or renders obvious claim 10 under the correct construction.

Although Rembrandt argued that infringement and validity are distinct issues, the Federal Circuit noted that the testimony of Alere’s expert “demonstrates that the infringement and validity issues are intertwined”, before ordering a new trial on validity too.

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