Edwards Life Sciences v. Cook, Inc.

Edwards Life Sciences v. Cook, Inc. concerns intraluminal grafts for use in treating aneurisms without open surgery.  This case is instructive for patent attorneys on many levels.  For example, takeaway patent drafting lessons are:

1) Try to be clear when drafting an application that more than a single embodiment is being disclosed in the application;

2)  Avoid use of the phrase “the present invention” or “the invention” lest it be used against you;

3) Be aware that distinguishing prior art in the specification can be used against you;

4) Be aware that use of the abbreviation “i.e.” has the effect of defining a term rather than serving as an example.  (An example would instead be indicated by “e.g.”)

These are not new lessons; but, when they occur in the same case, they can be highly instructive.

Two issues from some of my earlier posts came up again in this oral argument.  The first was Judge Rader inquiring of counsel as to how the invention was an advancement over the prior art. [Listen]  He made the same inquiry in the oral argument of Lydall/Thermal Acoustical v. Federal Mogul Corp., as well.

The second issue was the focus by the judges on the language “present invention.”  The written opinions in “present invention” cases usually couple (1) the fact that a single embodiment was disclosed in the specification with (2) the applicant’s repeated use of the “present invention” language.  However, when one listens to the oral arguments for these cases, it is the repeated use of the “present invention” language in the specification that the judges emphasize in their questioning.  You can listen to Judge Lourie [Listen] and Judge Moore [Listen] addressing this issue with appellant’s counsel.

You can read the court’s opinion [Here].

You can listen to the entire oral argument [Here].

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