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E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions, L.L.C.

United States Court of Appeals for the Federal Circuit

May 14, 2008, Decided

2007-1568

Opinion

 [***1734]   [*1354]  MICHEL, Chief Judge.

E.I. du Pont de Nemours & Company ("DuPont") appeals from the district court's denial of its motion for preliminary injunction. Memorandum Opinion, E.I. du Pont de Nemours & Company v. MacDermid, Inc., Case No. 06-CV-3383 (MLC/TJB), 2007 U.S. Dist. LEXIS 58931 (D.N.J. Aug. 13, 2007) ("Preliminary Injunction Opinion"). We heard oral argument on April 9, 2008. We hold that the district court abused  [**2] its discretion in finding that a substantial question as to validity existed because of uncertainty regarding the priority date. Because the district court did not reach the parties' remaining arguments as to validity and enforceability as well as the remaining preliminary injunction factors, we vacate and remand for the district court to consider these issues in light of the correct priority date.

DuPont is the assignee of U.S. Patent No. 6,773,859 B2 ("the '859 patent"), titled "Process for Making a Flexographic Printing Plate and a Photosensitive Element for Use in the Process." The application for this patent was [***1735]  filed on February 27, 2002, and the patent issued on August 10, 2004. According to DuPont, its Cyrel FAST digital thermal technology is its commercial  [*1355]  embodiment of the invention of the '859 patent.

In prosecuting the '859 patent, DuPont originally filed a provisional application on March 6, 2001, and on February 27, 2002, it filed a non-provisional application. The Application Data Sheet ("ADS") filed with the non-provisional application stated: "Continuity Data: This application is a non-provisional of provisional 60/273669 2001-03-06 WHICH IS PENDING." The patent as  [**3] issued, however, did not reference the provisional application due to an oversight by the Patent and Trademark Office ("PTO"). After issuance, DuPont sought a certificate of correction pursuant to 35 U.S.C. § 254 to add a reference to the provisional application on the title page of the '859 patent. The PTO issued the Certificate of Correction on July 26, 2005, adding to the title page, "Related U.S. Application Data, Provisional application No. 60/273,669, filed on March 6, 2001."

In April 2006, DuPont sued MacDermid Inc. and MacDermid Printing Solutions, LLC ("MacDermid") in the District of Colorado for patent infringement, alleging that MacDermid's Magma, MLT, and Lava products infringed DuPont's '859 patent as well as another patent not at issue in this appeal. 2 In July 2006, the case was transferred from the District of Colorado to the District of New Jersey.

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525 F.3d 1353 *; 2008 U.S. App. LEXIS 10363 **; 86 U.S.P.Q.2D (BNA) 1732 ***

E.I. DU PONT DE NEMOURS AND COMPANY, Plaintiff-Appellant, v. MACDERMID PRINTING SOLUTIONS, L.L.C., Defendant-Appellee.

Prior History:  [**1] Appeal from United States District Court for the District of New Jersey in case no. 06-CV-3383, Judge Mary L. Cooper.

E.I. du Pont de Nemours & Co. v. MacDermid, Inc., 2007 U.S. Dist. LEXIS 58931 (D.N.J., Aug. 13, 2007)

Disposition: VACATED AND REMANDED.

CORE TERMS

provisional, non-provisional, patent, correction, inventor, certificate, preliminary injunction, district court, critical date, inventorship, infringement, filing date, substantial question, overlap, specific reference, data sheet, undisputed, effective, invalid, argues, title page, Continuity, invention, cause of action, public use

Civil Procedure, Appeals, Standards of Review, Abuse of Discretion, Patent Law, Remedies, Equitable Relief, Injunctions, De Novo Review, Invention Date & Priority, General Overview, US Patent & Trademark Office Proceedings, Examinations, Correction Certificates, Infringement Actions, Infringing Acts