Intellectual Property Discussion Forum

Forum · Joined: Mar 31, 2005 Messages: 19 Location: IP.com Offline

The United States District Court for the District of Delaware found U.S. Patent Nos. 4,980,281 (issued Dec. 25, 1990) (the '281 patent), 5,266,464 (issued Nov. 30, 1993) (the '464 patent), 5,688,655 (issued Nov. 18, 1997) (the '655 patent), and 5,877,007 (issued March 2, 1999) (the '007 patent) (collectively, the Housey patents) unenforceable due to inequitable conduct. Bayer AG v. Housey Pharm., Inc., Civ. No. 01-148-SLR, 2003 U.S. Dist. LEXIS 22411 (D. Del. Dec. 4, 2003). Because the district court clearly erred in making the factual findings underlying its determination, this court vacates and remands.

Dr. Gerard M. Housey is the named inventor of the Housey patents. Dr. Housey's patents claim research methods used by pharmaceutical companies for discovering drugs. All of the Housey patents trace their priority to the application that matured into the '281 patent. The '281 patent claims a process for determining whether a chemical inhibits or activates the production of a protein of interest within a cell. '281 patent, col. 24, l. 45 ' col. 26, l. 36. The claimed invention tests the cancer-fighting potential of new drugs. After the '281 patent issued, Dr. Housey assigned his patent rights to Housey Pharmaceuticals, Inc. (Housey).

On March 6, 2001, a group of plaintiffs, including Bayer AG and Bayer Corp. (collectively Bayer), sued Housey in the United States District Court for the District of Delaware. Bayer sought declaratory judgments of invalidity, noninfringement, and unenforceability due to inequitable conduct with regard to the Housey patents. On November 12, 2002, the district court issued a claim-construction ruling on the disputed terms in the '281 patent. This ruling was not favorable to Housey. At that point, Bayer entered into a stipulation with Housey, agreeing that if the district court's claim construction was upheld on appeal, Housey would not appeal a finding by the district court that the Housey patents were invalid and not infringed. The district court then entered a final judgment of invalidity and noninfringement for all of the Housey patents. Housey then appealed three of the district court's five claim construction holdings to the United States Court of Appeals for the Federal Circuit. On May 7, 2004, this court upheld one of the district court's claim constructions, which rendered the '281 patent invalid and not infringed...

In conclusion, because the district court clearly erred in making the factual findings that support its credibility determination, this court vacates and remands.