Homework 5: Due Wednesday March 23

Abbott Laboratories (Plaintiff, Illinois corporation) v. Diamedix Corporation (Defendant, Florida corporation)

This case was held in the United States District Court, N.D. Illinois, Eastern Division This case involved the patenting of "sandwich"-type enzyme immunoassys (EIAs) that are used to detect the presence of antigens in a body fluid sample, such as a blood sample. Diamedix owned the patents and licensed them exclusively to Abbott. Abbott filed suit seeking that the patents were invalid and the licensing agreements are void. Abbott believed that the Japanese patent application number 46/16535 by S. Mukojima anticipates both of Diamedix patents under 35 USC 102(b). Abbott also believed that the Japanese patent also renders the Diamedix patents obvious under 35 USC 103. This was a unique case because it involved a ruling on summary judgment. Abbott wanted summary judgment, but it was denied by the court because Abbott has not fulfilled its burden to prove obviousness. The publication in question is the Mukojima Japanese patent application. Diamedix admits that this patent application was open for public inspection more than one year before the Diamedix patent applications were filed, but it is still in question in the court whether or not a foreign patent application that is open to public inspection is considered a "printed publication." The Mukojima patent application is considered to be relevant information in regards to the prior art, but Diamedix contends that it does not specifically list the same claims that the Diamedix patents have. The district court held that such decisions regarding obviousness and anticipation will be determined at trial since summary judgment was denied. Abbott cannot pick and choose among individual elements from several different sources to recreate the invention in question unless they can show that these references also mention something about the particular combination.