Federal Circuit Defines Substantial New Question of Patentability for Purpose of Reexamination Not Precluded by District Court Validity Finding

In In re Swanson, 540 F3d 1368 (Fed. Cir. 2008), ­­­Surmodics, Inc. (“Surmodics”) appealed the Federal Circuit for the United States Patent and Trademark Office’s (“PTO”) Board of Patent Appeals and Inferences (“Board”), which upheld the examiner’s rejection of claims 22-25 of U.S. Patent No. 5,073,484 (“the ‘484 patent”) in a reexamination proceeding. The Federal Circuit affirmed. On February 23, 1983, Melvin Swanson and Patrick Guire filed the ‘484 patent.  The ‘484 patent discloses a method of quantitatively analyzing small amounts of biological fluids (e.g., milk, blood, urine, etc.) to detect the presence of a particular substance (the analyte). The method discloses one or more “reaction zones” that contain a bound reactant and are spaced out on a test strip made of a liquid-permeable solid. When a test solution is applied to the test strip, it moves along a flow path to sequentially encounter the reactant-containing zones. When a solution containing the requisite analyte reaches each of the reaction zones,

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