UNITED STATES DISTRICT COURT FOR THE 

DISTRICT OF NEW HAMPSHIRE

Marine Polymer Technologies, Inc.

v. Civil No. 06-cv-100-JD

Opinion No. 2010 DNH 127

HemCon, Inc.

O R D E R

The determination of obviousness is a legal issue for the

court to decide, based on underlying factual findings. See

Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Before trial,

the parties submitted requests for findings of fact and rulings

of law, which included the issue of obviousness. The factual

issues pertaining to obviousness, however, were tried to the

jury. At the close of HemCon’s case on invalidity, Marine

Polymer moved for judgment as a matter of law on all of the

invalidity defenses. The court granted judgment as a matter of

law in Marine Polymer’s favor on the defenses of lack of a

written description, lack of enablement, and natural product but

reserved judgment on the defenses of anticipation and

obviousness. 

The jury found in Marine Polymer’s favor on anticipation and

on the factual issues pertaining to obviousness. After the

verdict, HemCon filed a motion for judgment as a matter of law

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and for a new trial on anticipation and obviousness, which was

denied. The court now makes the obviousness determination.

Under 35 U.S.C. § 103, patent claims are invalid due to

obviousness if “‘the differences between the subject matter

sought to be patented and the prior art are such that the subject

matter as a whole would have been obvious at the time the

invention was made to a person having ordinary skill in the

art.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007)

(quoting § 103). The underlying factual issues pertaining to

obviousness include “the scope and content of the prior art, the

differences between the prior art and the claims at issue, the

level of ordinary skill in the pertinent art, and secondary

considerations, otherwise known as objective indicia of

nonobviousness.” Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1349

(Fed. Cir. 2009) (internal quotation marks omitted). Invalidity

due to obviousness must be proven by clear and convincing

evidence. Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602

F.3d 1325, 1338 (Fed. Cir. 2010); Fresenius USA, Inc. v. Baxter

Int’l, Inc., 582 F.3d 1288, 1294-95 (Fed. Cir. 2009).

The asserted claims of the ‘245 patent are claims 6, 7, 10,

11, 12, 17, and 20. The invention claimed by the asserted claims 

is biocompatible poly-ß-164-N-acetylglucosamine and biocompatible

poly-ß-164-glucosamine with certain other elements. The asserted

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claims for biocompatible poly-ß-164-N-acetylglucosamine include

limitations for certain numbers of monosaccharides covalently

attached in a ß-164 conformation, certain molecular weights,

certain amounts of deacetylization, and an elution test score of

0. The asserted claims for biocompatible poly-ß-164-glucosamine

include limitations for numbers of monosaccharides and an elution

test score of 0. The terms “biocompatible poly-ß-164-Nacetylglucosamine” and “biocompatible poly-ß-164-glucosamine”

were construed to mean: 

polymers with their stated compositions (poly-ß-164-Nacetylglucosamine and poly-ß-164-glucosamine) and with

low variability, high purity, and no detectable

biological reactivity as determined by biocompatibility

tests. 

Before trial, HemCon requested findings related to

obviousness on the level of ordinary skill, scope and content of

the prior art, and differences over the prior art.1 Marine

Polymer requested findings on the level of ordinary skill, claim

construction, and HemCon’s expert’s opinions on obviousness based

on the prior art. The parties later agreed on the scope and

content of the prior art, which consisted of the following:

1HemCon’s requests directed to the differences over prior

art stated generally, without reference to particular prior art,

that the claimed chemical compositions were not different from

disclosed chemical compositions and that any differences in the

chemical compositions would be minor and obvious.

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1) Paul A. Sandford, “Chitosan: Commercial Uses and

Potential Applications, published in Chitin and

Chitosan: Sources, Chemistry, Biochemistry, Physical

Properties and Applications at pages 51 - 59 (1989);

2) Paul A. Sandford, “Biomedical Applications of New

Forms of Chitin/Chitosan” (1992);

3) Protasan Trade Brochure;

4) United States Patent Number 4,394,373 (Malette), and

5) United States Patent Number 3,533,940 (Peniston, et 

al.). 

At trial, Dr. Sandford testified that he used

“biocompatible” in his 1989 article as a general term that meant

many different things to different people. Dr. Sandford

acknowledged that the term biocompatible, as used in his article,

referred to the application of p-GlcNAc material and did not

disclose testing for biocompatibility. HemCon’s expert witness,

Dr. Dornish, testified that Dr. Sandford’s 1989 article disclosed

biocompatible p-GlcNAc because it disclosed medical uses which

required no biological reactivity and that the ‘373 patent to

Mallette similarly disclosed p-GlcNAc with little or no

biological reactivity because of the suggested uses. On crossexamination, Dr. Dornish explained that his opinions were based

on a definition of biocompatibility that the material’s use or

application determines its biocompatibility.

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Case 1:06-cv-00100-JD Document 414 Filed 07/27/10 Page 4 of 7
Marine Polymer’s expert witness, Dr. Langer, testified at

trial that the cited prior art references did not disclose the

properties of biocompatible poly-ß-164-N-acetylglucosamine and

biocompatible poly-ß-164-glucosamine. In particular, Dr. Langer

explained that the prior art did not disclose p-GlcNAc with no

detectable biological reactivity as determined by

biocompatibility tests. 

The parties agreed to a jury verdict form, which was

submitted to the jury. The jury found that the applicable level

of ordinary skill in the field was “at least a bachelor’s degree

in engineering, material science, biology, or a related

discipline, and at least two years of practical experience with

biomaterials.” With respect to the differences between the prior

art and the claimed invention, the jury found that none of the

properties of biocompatible poly-ß-164-N-acetylglucosamine and

biocompatible poly-ß-164-glucosamine were disclosed in the prior

art. The jury also found in Marine Polymer’s favor as to the

objective factors of nonobviousness and found that HemCon failed

to establish either of the factors tending to show obviousness.

 In its motion for judgment as a matter of law or a new

trial, HemCon argued that the jury’s findings concerning the

differences between the prior art and the claimed invention,

pertaining to obviousness, were not supported by the evidence. 

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HemCon also disputed two of the jury’s findings and argued that

the asserted errors undermined the jury’s other findings. The

court concluded that the jury’s findings were supported by the

evidence, that the verdict form was answered correctly, and that

the findings did not support an inference that the jury did not

properly render its verdict. The motion was denied. 

For purposes of making the obviousness determination here,

the court accepts the jury’s factual findings, which are amply

supported by the evidence at trial.2 With respect to the jury’s

findings that the prior art did not disclose poly-ß-164-Nacetylglucosamine or poly-ß-164-glucosamine, the jury correctly

determined that neither biocompatible poly-ß-164-Nacetylglucosamine nor biocompatible poly-ß-164-glucosamine was

disclosed in the prior art. The jury also found that the prior

art did not disclose the listed properties of biocompatible polyß-164-N-acetylglucosamine and biocompatible poly-ß-164-

glucosamine, as claimed in the ‘245 patent. Based on the jury’s

findings, the prior art did not disclose the claimed invention. 

2HemCon’s requests for findings pertaining to the chemical

compositions of the claimed invention and prior art are not

pertinent to the obviousness determination in this case which

focuses on the meaning of biocompatible as claimed in the ‘245

patent. To the extent HemCon merely asserts that chitin and

chitosan, without a limitation for biocompatibility, were

disclosed in the prior art, that does not appear to be a disputed

issue.

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Therefore, the asserted claims of the ‘245 patent were not

obvious and are valid.

Conclusion

For the foregoing reasons, the court rules that HemCon did

not prove by clear and convincing evidence that the asserted

claims of the ‘245 patent were obvious in light of the prior art.

Therefore, the counterclaim and defense of obviousness are

denied. 

SO ORDERED.

____________________________

Joseph A. DiClerico, Jr.

United States District Judge

July 27, 2010

cc: Julie M. Baher, Esquire

Celine Jimenez Crowson, Esquire

Garet K. Galster, Esquire

Daniel R. Johnson, Esquire

Heather E. Krans, Esquire

Joseph A. Kromholz, Esquire

Raymond A. Kurz, Esquire

Lynda Q. Nguyen, Esquire

Keith B. O’Doherty, Esquire

Rebekah L. Osborn, Esquire

Brian M. Poissant, Esquire

Daniel D. Ryan, Esquire

Ognian V. Shentov, Esquire

Jonathan M. Shirley, Esquire

Daniel E. Will, Esquire

Leigh S. Willey, Esquire

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