Vas-Cath Incorporated v. Mahurkar

935 F.2d 1555 (1991)

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Nature of the Case

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Facts

D filed the '081 design application on March 8, 1982. The application was withdrawn and D also filed a Canadian Industrial Design application comprising the same drawings plus additional textual description. On August 9, 1982, Canadian Industrial Design 50,089 (Canadian '089) issued on that application. On October 1, 1984, D filed the first of two utility patent applications. Both utility applications included the same drawings as the '081 design application. The '601 application claimed the benefit of the filing date of the '081 design application, having been denominated a 'continuation' thereof. The examiner noted that 'the prior application is a design application,' but did not dispute that the '601 application was entitled to its filing date. On January 29, 1986, D the '592 utility application, again claiming the benefit of the filing date of the '081 design application (the '592 utility application was denominated a continuation of the '601 utility application). The examiner stated that the '592 utility application was 'considered to be fully supported by applicant's parent application filed March 8, 1982 [the '081 design application].' Both applications issued as the '329 and '141 patents. P sued D in June 1988, seeking a declaratory judgment that the catheters it manufactured did not infringe D's '329 and '141 utility patents. P alleged that the patents were both invalid as anticipated under §102(b) by Canadian '089. P's claim was that the patents were not entitled to the filing date of the '081 design application because its drawings did not provide an adequate 'written description' of the claimed invention as required by §112. D alleging infringement. P conceded that the '081 design drawings enabled one skilled in the art to practice the claimed invention within the meaning of §112. The court ruled that the utility patents were anticipated by Canadian '089, and the '329 and '141 patents wholly invalid under §102(b). D appealed.