Exergen Corporation v. Kaz USA, Inc., 1-13-cv-10628 (MAD December 7, 2015, Order) (Stearns, J.)
Wednesday, December 9, 2015
Invalidation of Certain Claims Under 35 U.S.C. § 101 Does Not Invalidate Entire Patent
The court partially denied defendant's motion for summary judgment that issue preclusion barred plaintiff's claims of infringement for its arterial thermometer patents after another court found certain claims invalid for lack of patentable subject matter and rejected defendant's argument that an invalidation of certain claims invalidates an entire patent. "[Defendant] makes a sweeping argument that the [other court's] decision invalidates all of the claims of the [patents-in-suit]. In pushing this argument, [defendant] relies on the rule regulating patent prosecution that permits a patent application to claim only one 'independent and distinct' invention. . . . [Plaintiff] counters, and this court agrees, that [defendant's] argument amounts to an impermissible bypass of the required claim-by-claim analysis. [Defendant] cites no authority for the proposition that rules of prosecution have any effect on a judicial determination of validity."