While sitting as a judge in the Northern District of Illinois, Judge Posner has ruled in a 15-page Markman opinion that Promega’s DNA fingerprint kit infringes on a patented process licensed by Applied Bioscience from Caltech. In the brief opinion, Posner rejects Promega’s efforts to narrow the patent’s claims beyond those regularly understood by expert scientists. Unfortunately for those watching SCOTUS and its rulings with regard to the Myriad case, Posner very clearly does not comment on the validity of the claims. We’ll have to stay tuned for that one.
The latter portion of the opinion is a veritable collection of USPTO Patent Bar test answers. Posner rejected arguments that the Caltech patent did not try to improperly “recapture reissue” by improperly broadening its claims in reissue. Next, he explained away Promega’s arguments that there was laches/equitable estoppel in the prosecution of the claims. He deals a coup de grace to arguments with regard to priority based on waiver and abandonment of a prior continuation application as the proper extension of time was sought and used. Lastly, he shuts the door on any admission that might be contained in a cross-license.
Posner’s job at the lower court may have been made easier by agreements in the cross-license that the patent claims were valid. Of course, Posner stays far away from any implication that this might have impacted his views on infringement. Of course, we know that Posner would never allow such a collateral issue to color his views while examining claims.
This is not the last word regarding these much litigated Caltech patents. So stay tuned for more soon.