Cases & Deals

Marine Polymer obtains en banc affirmance of $34.2 million judgment

Clients Marine Polymer Technologies, Inc.

On March 15, 2012, in a case closely watched by the intellectual-property bar, a cross-office and cross-practice team of Jones Day lawyers obtained an en banc affirmance of a $34.2 million patent-infringement judgment for medical device company Marine Polymer Technologies, Inc.

The case, filed almost six years ago, involved Marine Polymer's U.S. Patent No. 6,864,245, concerning biocompatible polymers. In particular, Marine Polymer's invention was directed to certain kinds of polymers that are useful for, among other things, stopping bleeding or hemorrhage, which makes them particularly useful in medical trauma units. Marine Polymer alleged that a competitor, HemCon, Inc., was making and selling products covered by the Marine Polymer patent. The district court found infringement of the asserted patent claims on summary judgment. After a ten-day jury trial in 2010, the Jones Day trial team, led by Intellectual Property practice co-chair Brian Poissant, obtained a favorable jury verdict of patent validity and damages from a federal jury in the District of New Hampshire.

On appeal, a 2-1 panel of Federal Circuit judges initially reversed that judgment in September 2011, holding that HemCon was entitled to absolute intervening rights and thus not liable for infringement with respect to products manufactured before the '245 patent came out of reexamination before the U.S. Patent and Trademark Office. The panel decision was based on certain statements made by Marine Polymer during the course of that reexamination; the patent claims asserted in the litigation were not changed in any way, however.

Marine Polymer asked the Federal Circuit to rehear the case en banc, and, on January 20, 2012, the court issued an order indicating that it would rehear the case en banc. The en banc court's opinion, which was issued on March 15, 2012, affirmed all aspects of the 2010 judgment of the New Hampshire District Court in favor of Marine Polymer, including a damages verdict in excess of $29.4 million, additional post-trial damages for infringing sales in 2010, and prejudgment interest, for a total of over $34.2 million. In addition, the judgment affirmed by the Federal Circuit includes a permanent injunction prohibiting HemCon from further infringing Marine Polymer's patent. Execution upon the damages award, and the permanent injunction, had previously been stayed by the Federal Circuit pending disposition of the appeal.

The March 15 en banc decision upheld the district court's judgment in its entirety, including the district court's construction of the '245 patent's claims, its infringement determination, and the damages award. As an alternative ground for affirmance, the en banc court rejected HemCon's intervening-rights defense, adhering to a faithful reading of the relevant statute, and holding that intervening rights do not apply where the patent claims in question are neither "new" nor "amended." The en banc court rejected the notion that patent claims may be "amended" based solely on arguments made to the U.S. Patent and Trademark Office, when the language of the claims does not change. In light of the en banc decision, the stay of execution upon the damages award, and the stay of the permanent injunction against HemCon, has now expired.

The Jones Day team representing Marine Polymer included partners Brian Poissant (lead counsel) and Ognian Shentov, and associates Lynda Nguyen and Julie Baher, all of the Firm's New York office. They were joined at the appellate level by Greg Castanias (Washington), leader of the Firm's Federal Circuit and IP Appeals practice. Additional information about the case may be obtained by contacting Mr. Poissant, Dr. Shentov, or Mr. Castanias.

Marine Polymer Technologies, Inc. v. HemCon, Inc., No. 2010-1548 (Fed. Cir. March 15, 2012)

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