Durex Condom Maker Reckitt Gets Two Patents Tossed

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By Tony Dutra

Reckitt Benckiser LLC knocked out two patents being asserted against its Durex Real Feel condoms at the Patent and Trademark Office.

Ansell Healthcare Products LLC, headquartered in Iselin, N.J., sued U.K.-based Reckitt in the U.S. District Court of Delaware for allegedly infringing four patents on producing synthetic polyisoprene articles. Reckitt challenged the two newest of the four patents at the PTO’s Patent Trial and Appeal Board.

The board held that all claims of U.S. Patent Nos. 9,074,027 and 9,074,029 should not have been granted in final written decisions Jan. 30.

The parties already agreed that the portion of Ansell’s complaint related to those patents would be removed from consideration by the jury in the district court case. Trial is set for Feb. 20.

Follow-On Claims Not Supported by Original Patent

The canceled patent claims are based on the same invention described in the two patents remaining in the trial, U.S. Patent Nos. 8,087,412 and 8,464,719.

The PTAB ruled that the newer claims, filed in 2013, were an attempt to expand the scope of Ansell’s patent protection beyond what was supported by the description, which was filed in 2008.

Reckitt didn’t challenge the older patents at the PTAB. The jury in the district court case, No. 1:15-cv-00915 (D. Del.), will review Reckitt’s arguments that those patent claims are invalid based on prior inventions from the early 2000s, or are not infringed by the Durex condoms.

Counsel for the parties at the district court—Morgan, Lewis & Bockius LLP for Ansell and Barclay Damon LLP for Reckitt—confirmed the status of the case but declined to comment further on how the PTAB’s rulings might affect the outcome. Sterne, Kessler, Goldstein & Fox PLLC and Moser Taboada represented Ansell before the PTAB.

The PTAB cases are Reckitt Benckiser LLC v. Ansell Healthcare Products LLC , P.T.A.B., No. IPR2017-00063, 1/30/18 , and Reckitt Benckiser LLC v. Ansell Healthcare Products LLC , P.T.A.B., No. IPR2017-00066, 1/30/18

To contact the reporter on this story: Tony Dutra in Washington at adutra@bloomberglaw.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bloomberglaw.com

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