Patent Law

Centocor v. Abbott (E.D.Tex.)

Abbott has two chances to block the $1.67 billion jury verdict while the case is still in the hands of E.D. Texas Judge Ward.

Inequitable Conduct: Because inequitable conduct is an equitable doctrine, it is determined by a judge. In this case, Judge Ward bifurcated the trial and will hold a one-day bench trial on inequitable conduct on August 4, 2009. On the 4^th, parties will each have three hours of witness time and 25 minutes for argument.

Judgment Notwithstanding the Verdict (JNOV): This is unlikely in Judge Ward?s courtroom ? especially here since the Judge has already denied Abbott?s motions for summary judgment.

On appeal at the Federal Circuit look for a number of different disputes, including:

• Priority dates and anticipation: Centocor?s patents claim priority to 1991 via a series of continuations-in-part, but the claims at issue were probably not enabled until a 1994 filing. In 1993, a foreign counterpart of the original application published - becoming prior art against the 1994 CIP filing. The appeal may focus on the symmetry (or lack therof) between enablement and anticipation.
• Damages: The damage calculation here is somewhat complex and could lead to important Federal Circuit precedent on lost profits