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Pharma Tech Solutions, Inc. v. LifeScan, Inc.

Fed Cir Affirms Summary Judgment Application of Prosecution History Estoppel

Pharma Tech Solutions, Inc. v. LifeScan, Inc., __ F.3d __, 2019 WL 6222860 (Fed. Cir. Nov. 22, 2019) (Moore, Reyna, STOLL) (D. Nev.: Boulware) (2 of 5 stars)

Fed Cir affirms summary judgment of no infringement. Pharma Tech’s patent relates to home-use blood glucose monitoring systems for people with diabetes. It was not disputed that LifeScan did not literally infringe, and both amendment-based and argument-based prosecution history estoppel bar Pharma Tech from asserting the doctrine of equivalents. The opinion discusses the prosecution history and discusses how an amendment in October 1997 narrowed the claims to systems with a specific mode of operation. “The applicants thus presumptively surrendered any bioelectrical blood glucose monitoring systems that do not [operate that way]. Pharma Tech’s asserted equivalent . . . Falls squarely within the territory between the original claim and the amended claim.” Op. at 15. The apparent rationale of the amendment was not merely tangential to LifeScan’s systems, per Integrated Tech., 734 F.3d 1352 (Fed. Cir. 2013). The opinion analyzes both the amendment’s text and the inventors’ arguments accompanying it. “Based on the inventors’ clear statements, a competitor reviewing the prosecution history . . . would reasonably believe that the inventors had surrendered systems that do not [practice the claims literally].” Op. at 17. Even if the affected limitations were already present in the prior art (as Pharma Tech argued), Pioneer Magnetics, 330 F.3d 1352 (Fed. Cir. 2003), is not contrary. “That the October 1997 may have ceded more claim scope than necessary to overcome prior art does not mean that the tangential relation exception applies here.” Op. at 18. The opinion rejects Pharma Tech’s other arguments that its amendment was motivated by concerns only tangentially related to LifeScan’s systems, emphasizing that LifeScan was undisputedly not practicing the invention as literally claimed, and in that respect was similar to the prior art.

KEYWORDS: INFRINGEMENT (NO); PROSECUTION HISTORY ESTOPPEL (YES); TANGENTIAL EXCEPTION