Fox Rothschild LLP represented Pharma Tech. Patterson Belknap Webb & Tyler LLP and Hoffmann Marshall Strong LLP represented LifeScan.
The U.S. Court of Appeals for the Federal Circuit affirmed a district court decision granting summary judgment of noninfringement in a patent case involving blood-glucose test strips.
In March 2016, Pharma Tech, which is a subsidiary of Decision Diagnostics Corp., sued LifeScan, accusing it of infringing two related patents covering Pharma Tech’s test strips, which are sold as GenStrip.
The GenStrip can be used with LifeScan’s OneTouch Ultra monitors and was at one point the only third-party strip approved for use by the U.S. Food and Drug Administration, according to the judge.
When a patent applicant narrows a claim during prosecution, it is presumed that the “territory between the original claim and the amended claim” is disclaimed as well, the judge had noted.
On appeal, Pharma Tech contended that the lower court erred in finding that the company was barred from making infringement allegations based on the prosecution history of one of the patents.
The judge in October 2018 was unpersuaded by Pharma Tech’s arguments, finding that its reliance on the comparison of concentrations in order to differentiate itself with prior art made it “at minimum, a significant aspect” of its amended claim.
The Federal Circuit affirmed that LifeScan, a Johnson & Johnson subsidiary’s blood-glucose test trips, did not infringe two patents owned by the medical device maker Pharma Tech, siding with a lower court that said the device maker had narrowed the claims that could have covered J&J’s test strips during prosecution of its own patent.
The judge had found that LifeScan’s test trips do not compare glucose concentrations as Pharma Tech’s did, and instead used a method that Pharma Tech already excluded during patent prosecution after an examiner had originally rejected its broader claims.
Patterson Belknap Webb & Tyler represented LifeScan with Eugene Gelernter (Picture) and Gregory Diskant.
Hoffmann Marshall Strong represented LifeScan with Charles Hoffman and Sean R. Marshall.
Fox Rothschild represented Pharma Tech with John Shaeffer, Jeffrey H. Grant and William A. Rudy.
Involved fees earner: Jeffrey Grant – Fox Rothschild llp; John Shaeffer – Fox Rothschild llp; Charles Hoffmann – Hoffmann Marshall Strong; Sean Marshall – Hoffmann Marshall Strong; Gregory Diskant – Patterson Belknap; Eugene Gelernter – Patterson Belknap;