Winston Wins Federal Circuit Appeal in Streck Inc. v. Research & Diagnostic Systems Inc.

On October 20, 2011 Winston & Strawn won a Federal Circuit appeal in Streck Inc. v. Research & Diagnostic Systems Inc. In 2006, Streck sued R&D in the Nebraska district court for infringement of several of its patents covering integrated hematology controls. R&D’s main defense to infringement was that its own employee had invented an integrated hematology control before Streck. In early 2007, the USPTO Board of Patent Appeals and Interferences declared an interference proceeding between these Streck patents and an R&D patent application to resolve this same issue of priority of invention, and the two cases proceeded in parallel for several years. In October 2009, a Nebraska jury found that Streck was first to invent the integrated hematology control, however, several days after the jury verdict, the USPTO Board awarded priority of invention to R&D.

Streck sought review of the Board’s ruling and in October 2010 the decision was overturned by a Nebraska court, once again finding that Streck’s scientists were the first to invent the claimed hematology control. R&D then appealed to the Federal Circuit, arguing that the Nebraska court should have given deference to the USPTO board’s findings instead of performing a de novo review of the combined evidence from the infringement trial and interference.

The Federal Circuit rejected that argument and upheld the Nebraska district court’s decision, ruling that Streck scientists were the first to invent an integrated hematology control product.

UPDATE:  On January 10, 2012, the Federal Circuit affirmed the district court's judgment in the jury trial in favor of Winston & Strawn client Streck, Inc. on all issues appealed by R&D. 

The Federal Circuit affirmed the district court's decision that declaratory judgment jurisdiction did not exist for claims Streck was not asserting in the lawsuit, and further affirmed the district court's decision awarding Streck summary judgment that its patents met the written description requirement. The Federal Circuit also affirmed the district court's judgment as a matter of law in favor of Streck that the patents were enabled. As to the issue of priority of invention, the Court acknowledged that its resolution of related appeal in favor of Streck was controlling. Lastly, the Federal Circuit held that the district court did not abuse its discretion by entering an injunction which not only prohibited R&D from making the products adjudicated as infringing, but also prohibited R&D from "otherwise infringing the asserted claims [of the patents-in-suit]." 

Winston & Strawn Houston-based former partner represented Streck in the appeal.