Therasense, Inc. v. Becton, Dickinson and Company

Filing 1140

REQUEST FOR FURTHER BRIEFING. Signed by Judge Alsup on March 22, 2012. (whalc1, COURT STAFF) (Filed on 3/22/2012)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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Plaintiff,

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REQUEST FOR
FURTHER BRIEFING

v.
BECTON, DICKINSON AND
COMPANY,
Defendant.

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For the Northern District of California

United States District Court

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No. C 04-02123 WHA

THERASENSE, INC.,

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AND CONSOLIDATED CASES.
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Further briefing is requested by the judge on the question of whether, in evaluating

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“knowledge of materiality,” the applicant should be given the benefit of hypothetical arguments

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that could have been made to the examiner to distinguish the EPO briefs and, if so, must those

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arguments have actually been in the mind of Dr. Sanghera and Attorney Pope (as opposed to

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constructed during later litigation)? These questions were raised at oral argument. Defendants

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pointed to the remand instructions which referenced no hypothetical argument and Abbott

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referred to the discussion of PTO Rule 56 at page 1294 (col. 2). The judge cannot find a direct

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answer to these questions in the court of appeals opinion. Counsel will please do a more

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thorough analysis, including a review of decisions since the remand order. Each side may have

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up to seven pages (double-spaced, no footnotes). The defense must share one seven-page brief.

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Briefs are due MONDAY AT NOON. By TUESDAY AT NOON, each side may file three-page

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replies.

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IT IS SO ORDERED.

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Dated: March 22, 2012.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE