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Judge Andrews denies motion for judgment on the pleadings premised on argument that certificates of correction were invalid

In B. Braun Melsungen AG, et al. v. Becton, Dickinson and Company, et al, C.A. No. 16-411-RGA (D. Del. June 9, 2017), Judge Richard G. Andrews recently denied a motion for judgment on the pleadings seeking to invalidate three asserted patents based on a fourth asserted patent claimed to be 102(b) prior art.  The defendants’ motion was premised on the argument that the three patents were not entitled to a priority date earlier than the fourth asserted patent because, while the three patents included reference to prior-filed applications, “[w]hat was missing in each application was the relationship between the applications and the chain of priority.”  Id. at 4.  The plaintiffs successfully obtained certificates of correction to address these relationships, but the defendants argued that such an error could not be corrected by a certificate of correction without re-examination, and therefore the certificates of correction were invalid and the patents were not entitled to the earlier priority dates.  Id.  Judge Andrews disagreed, and found that the “changes made by the certificate of correction were ‘of a minor character'” and did not require re-examination.  Id. at 5-6.  The Court noted further that the PTO “has a long-standing practice of correcting priority claims through certificates of correction.”  Id. at 7. As a result, the Court could not find that the defendants proved by clear and convincing evidence that the certificates of correction were invalid in denying the motion for judgment on the pleadings.

Braun 16-411

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