NEPTUNE, N.J.--(BUSINESS WIRE)--Excelsior Medical Corporation announced today that the United States Patent and Trademark Office (USPTO) has issued Right of Appeal Notices in the three inter partes reexamination proceedings filed by Excelsior against three U.S. patents (U.S. Patent No. 7,780,794; U.S. Patent No. 7,985,302; and U.S. Patent No. 8,206,514) that Ivera Medical Corporation had accused Excelsior of infringing. All three of the Notices include final determinations that all of the patent claims asserted by Ivera against Excelsior are invalid and were issued after the USPTO had considered and rejected Ivera’s written submissions and expert testimony.
Ivera’s accusations are contained in two lawsuits that Ivera filed against Excelsior in Federal Court in California. Excelsior has consistently maintained not only that its SwabCap®, SwabFlush®, and related products did not infringe the Ivera patent claims, but also that Ivera’s asserted claims were invalid. As part of its defense, therefore, Excelsior asked the USPTO to reassess whether the asserted patent claims were valid.
In November 2012, after considering the facts and arguments put forward by Excelsior, the USPTO issued its first Office Actions rejecting all of the patent claims Ivera was asserting that Excelsior infringed.
Ivera then asked the USPTO to reconsider its decision. But after a full review of all the arguments made by Ivera, the USPTO issued Actions Closing Prosecution in May 2013, confirming its earlier findings that all of the claims that Ivera accused Excelsior of infringing were invalid.
Still not content, Ivera again challenged the Actions Closing Prosecution, citing “new” arguments why the USPTO was wrong and Ivera was right. At the same time, Ivera pressed ahead with its lawsuits against Excelsior and others in the California federal courts, making frequent press release statements about Ivera’s purported successes along the way, notwithstanding the USPTO’s earlier findings. However, after exhaustively considering all of the latest arguments by Ivera, the USPTO last week issued Right to Appeal Notices reiterating that all of the patent claims that Ivera asserts against Excelsior remain rejected as unpatentable.
In the latest findings, the USPTO cited numerous grounds of rejection based on individual items of prior art and combinations of prior art, which predated the Ivera patents. During the reexamination process, the USPTO concluded that the arguments Ivera put forward in defense of its patents were unconvincing and noted that various responses made by Ivera were erroneous. The USPTO further found that Ivera’s own “expert” witness testimony was not proper and not persuasive.
“While this has been a long and frustrating process, Excelsior has always maintained its position that it had done no wrong and that the Ivera patent claims were invalid,” said Steve Thornton, CEO of Excelsior. “We are very pleased that the USPTO examiner has made its final decision in this review process, agreeing that the patent claims asserted by Ivera are indeed invalid. While given past behavior it is possible that Ivera will seek to appeal the consistent position of the USPTO that Ivera’s patent claims are not valid, we are confident the outcome will be the same.”
Excelsior Medical is a privately held medical device company founded in 1989 that offers a number of products that fulfill the needs of the healthcare practitioner. These products include saline and heparin flush syringes, dispensing pumps, syringe pumps, and SwabCap. Excelsior owns U.S. Patent Nos. 8,167,847 and 8,231,602, as well as a number of foreign patents and other patents pending.
In 2009, Excelsior Medical launched SwabCap, a needleless connector cap that contains 70% IPA as a disinfectant. SwabCap disinfects and protects needleless connectors between accesses, helping clinicians provide better patient care and comply with valve disinfection protocols. SwabCap incorporates Excelsior’s patent-pending thread cover feature, designed to seal against the base of the valve to prevent evaporation of the alcohol from under the cap when it is applied and to better prevent microbial ingress. Excelsior has the unique ability to combine its ZR® saline flush syringes and SwabCap into one convenient product, called SwabFlush, increasing technique standardization and compliance. All of Excelsior’s prefilled catheter flush syringes are manufactured and terminally sterilized in the U.S. in Neptune, N.J.