IP Law Daily, PATENT—D. Mass.: Incorporation by reference sufficient to establish priority for on-sale bar analysis, (Sep 14, 2022)

By Kevin M. Finson, J.D.

A patent could properly claim priority through incorporations by reference of an earlier patent application because doing so was consistent with USPTO guidance and put the reader on notice of what was claimed.

A medical device manufacturer and owner of a patent directed an intravascular blood pump system properly incorporated by reference a prior art patent application claiming a “pigtail-shaped distal tip” in the priority chain, the federal district court in Boston has held. The incorporation was specific and clear and put the reader on notice of what was claimed (Maquet Cardiovascular LLC v. Abiomed, Inc., September 12, 2022, Saylor, F.).

Maquet Cardiovascular, LLC (Maquet) was the owner of U.S. Patent No. 10,238,783 (the ’783 patent), which claimed an intravascular blood pump system that included a “pigtail-shaped distal tip.” Maquet filed suit against Abiomed, Inc. and its sister companies (Abiomed) for infringement of the ’783 patent by sale of Abiomed’s “Impella” line of intravascular pumps. Abiomed moved for partial judgment on the pleadings, arguing that one of the asserted claims was invalid under the on-sale bar.

On-sale bar. Abiomed argued that claim 24 of the ’738 patent was invalid because it could not properly claim priority to an earlier abandoned patent application, and therefore fell within the on-sale bar. The priority chain leading backwards from the ’738 patent did not include the “pigtail-shaped distal tip” language but did incorporate by reference U.S. patent application Ser. No. 09/280,988 (the ’988 application). The court held that the required continuity of disclosure was met. The incorporation by reference was specific and precise and put the reader on proper notice of the claims. It was consistent with the administrative guidance set out by the USPTO. The court accordingly denied the motion for partial judgment on the pleadings.

The Case is No. 1:17-cv-12311-FDS.

Attorneys: Andrew J. Ligotti (Alston & Bird, LLP) and Gregory J. Carbo (Chadbourne & Parke LLP) for Maquet Cardiovascular LLC. Andrei Harasymiak (Cravath, Swaine & Moore LLP) and C. Sebastian Zonte (White & Case LLP) for Abiomed Inc. and Abiomed R&D, Inc.

Companies: Maquet Cardiovascular LLC; Abiomed Inc.; Abiomed R&D, Inc.

Cases: Patent MassachusettsNews