Reexaminations May Review Previously Considered References

The U.S. Court of Appeals for the Federal Circuit affirmed the validity of a reexamination proceeding, despite a reference used to reject the claims having been previously considered by both the Patent and Trademark Office (PTO), a district court and the Federal Circuit. In re Swanson, Case No. 07-1534 (Fed. Cir., Sept. 4, 2008) (Gajarsa, J.).

The patent at issue relates to a method in which a test strip receives a fluid that flows along the test strip and through zones which test for the presence of a substance. During the initial PTO examination, a number of claims were rejected as obvious, the PTO relying on a prior art patent, Deutsch, as a secondary reference against features of a dependent claim. After the claims were amended, a patent issued, was assigned to SurModics and was exclusively licensed to Abbott Laboratories. After Abbott sued Syntron Bioresearch on the patent, the defendant asserted patent claims were invalid both for obviousness and anticipation in