USPTO vindicated in contact lens patent battle
The US Court of Appeals for the Federal Circuit has ruled that the US Patent and Trademark Office (USPTO) was correct to invalidate a patent covering contact lenses.
The case concerns US patent number 4,306,042, owned by Dome Patent, which is directed to the polymer science behind the material used to manufacture contact lenses.
In 1997, Dome sued six contact lens makers alleging infringement of the ‘042 patent. But in response, one of the makers, Optical Polymer Research, requested an ex parte re-examination of the patent at the USPTO.
Two years later, the USPTO agreed to re-examine the patent and the infringement dispute was stayed. In 2006 the USPTO ruled that claim 1 of the patent was obvious and therefore invalid, but that claims 2, 3 and 4 were valid.
Dome sued the USPTO in 2007 at the US District Court for the District of Columbia and asked it to order the office to re-examine the ‘042 patent again. But the district court affirmed the USPTO’s decision that claim 1 of the patent was obvious.
On appeal to the federal circuit, Dome argued that the USPTO should not have applied the ‘preponderance of evidence’ standard in invalidating the patent.
But in a unanimous decision issued by the federal circuit on Thursday, September 3, Dome’s appeal was rejected.
Judge Todd Hughes, writing the opinion for the court, said the district court had committed no error by not requiring the USPTO to rule on the patent’s validity using the ‘clear and convincing evidence’ standard.
Dome said it was protected by the Supreme Court’s decision in Microsoft v i4i, which said that US patent law “requires an invalidity defence to be proved by clear and convincing evidence”.
But Hughes said Dome was not protected by the standard because the district court was not reviewing infringement proceedings, but instead was assessing the re-examination decision by the USPTO that ‘042 patent was invalid. Therefore, he said, the USPTO was correct to usethe ‘preponderance of evidence’ standard.
“The action before the district court did not involve a defence to a charge of infringement of an issued patent ... Only if the district court found in favour of Dome would the USPTO be authorised to issue the patent. And only after the patent issued would it be entitled to the presumption of validity,” Hughes said.
“When the USPTO issues ex parte re-examination, it reopens prosecution to determine whether the claimed subject matter should have been allowed in the first place ... Accordingly, the presumption of validity is no longer applicable,” he added.
On the question of obviousness, Hughes affirmed the district court’s decision.
“Because the district court did not commit reversible error in its determination that the claimed subject matter would have been obvious to a person of ordinary skill during the relevant time period, we affirm,” Hughes concluded.
The USPTO declined to comment on the case.
