Breach of Duty to Disclose Patent to Standards Setting Organization Equitably Estops Enforcement

Following a jury verdict of infringement and invalidity, the court granted in part defendant's motion for judgment as a matter of law that plaintiff was equitably estopped from enforcing its anticoagulant patent. "⁠[Plaintiff] had a duty to disclose its patent to [a standards setting organization] and it breached that duty through silence. . . . This Court agrees that there was credible testimony supporting the inference that [defendant] relied on [an SSO provision] for its continued use of the 15-25% procedures. . . . [Defendant] has shown that it would be economically prejudiced if [plaintiff] were permitted to enforce the patent against it. . . . Because [one] procedure does not comply with [the SSO provision], [plaintiff] is only equitably estopped from enforcing its patent against the 15-25% procedures."

Momenta Pharmaceuticals, Inc., et al v. Amphastar Pharmaceuticals, Inc., et al, 1-11-cv-11681 (MAD February 7, 2018, Order) (Gorton, USDJ)