Here are several stories that did not warrant a full post, or that were so well done by another blogger that there was no point in recreating the wheel:
The Federal Circuit upheld Judge Coar’s preliminary injunction in Abbott v. Sandoz, No. 05 C 5373 — click here to read the Federal Circuit’s opinion and here to read the Blog’s prior posts on the case. Dennis Crouch at Patently-O has a good post explaining the central issue of the case — a defendant’s burden of proof regarding invalidity in the likelihood of success analysis. Judge Newman wrote the majority decision with Judge Gajarsa dissenting. Crouch sees the case as a “good vehicle” for en banc review of the preliminary injunction standard.
Ocean Tomo is holding its 8th IP auction at home in Chicago this Wednesday and Thursday.
Michael Sadowitz at the MTTLR Blog has a great post (click here to read it) discussing one of the big post-eBay unknowns, who sets post-verdict damages when a permanent injunction is not issued, judges or juries. Sadowitz looks at a string of Eastern District of Texas cases letting juries set post-verdict damages. Sadowitz also notes that the few courts that have looked at the issue have split as to whether post-verdict damages can be severed from the damages portion of the trial.
Finally, having mastered all things drug and device related, the Drug & Device Law blog has moved into the patent realm, with some excellent analysis by their colleagues Kevin McDonald and Larry Rosenberg of Jones Day. The post (click here to read it) discusses a recent Federal Circuit decision which held that cash payments made to settle Hatch-Waxman patent litigations do not violate antitrust laws, under certain conditions:
On October 15, 2008, the Federal Circuit joined the growing list of federal courts to hold that the use of cash payments to settle Hatch-Waxman patent litigation does not violate the antitrust laws as long as (1) the settlement excludes no more competition than would the patent itself and (2) the claim for patent infringement and/or validity is not a “sham,” that is, not “objectively baseless.” In In re Ciprofloxacin Hydrochloride Antitrust Litigation, No. 08-1097, 2008 WL 4570669 (Fed. Cir. Oct. 15, 2008), a unanimous panel of the United States Court of Appeals for the Federal Circuit affirmed the summary judgment granted to Bayer by the United States District Court for the Eastern District of New York, holding that Bayer’s settlement of patent litigation with a generic pharmaceutical manufacturer did not violate the antitrust laws.
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Abbott
Chicago’s Biggest Patentees
IPO recently published its list of 2007’s 300 most prolific patentees.* Chicago-area companies had a large presence on the list. Here they are, along with each entity’s rank on the list:
* Hat tip to Patent Docs for identifying the IPO’s list.
Chicago’s Most Prolific Patentees
28 Motorola (631 patents)
47 Boeing (428)
82 ITW (259)
289 Abbott (54)
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Obviousness Post-KSR
Brian Higgins’s Maryland IP Law Blog post about the progeny of In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007), inspired me to do follow up posts identifying Northern District cases discussing recent major IP decisions — click here for my post on injunctions after eBay Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). There have been a number of obviousness decisions in the Northern District since KSR Int’l Co. v. Teleflex Inc., __ U.S. __, 127 S.Ct. 1727 (2007). Here they are:*
Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 1549498 (N.D. Ill. May 24, 2007) (Coar, J.). — Holding that the Court’s pre-KSR analysis need not be reconsidered in light of KSR because an element was missing from the prior art, regardless of what standard was used.
Herman Miller, Inc. v. Teknion Corp., No. 05 C 2761, 2007 WL 2230042 (N.D. Ill. Jul. 30, 2007) (Gettleman, J.). — Noting that, in light of KSR, plaintiff issued a statement of non-liability and certain patents were removed from the suit.
Lexion Medical, LLC v. Northgate Techs., Inc., No. 04 C 5705, Slip Op. (N.D. Ill. Jun. 8, 2007). — Holding that the pre-KSR jury’s decision would not have changed if given a KSR obviousness instruction.
These opinions suggest that KSR is not changing obviousness law in the Northern District much. I suspect that is not true. Once we have a larger sample of cases, including more where the initial analysis was not done pre-KSR, we will see more patents held invalid based upon obviousness.
* A brief note on methodology: this was not a thorough study and does not include cases that granted or denied injunctions without discussion. For a more complete list of post-KSR decisions nationwide, go to the Fire of Genius.
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Willfulness Post-Seagate
Brian Higgins at the Maryland IP Law Blog posted an analysis of significant willfulness decisions post-In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007) — click here for the post and click here for a subsequent post discussing Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, 2008 WL 169029 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.). Of the eleven decisions Higgins identified, three were Northern District decisions and one was a Federal Circuit decision analyzing a Northern District case. Here are my posts on the Northern District decisions:
Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 4287503 (N.D. Ill. Dec. 4, 2007) (Coar, J.).
Se-Kure Controls, Inc v. Diam USA, Inc.
Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Jan. 3, 2007) (Moran, Sen. J.).
As you can infer from the relatively small number of cases identified by Higgins, there remains a lot of law to be written about Seagate before the standard is well settled. I suspect that within 18-24 months there will be a relatively large body of law, including numerous Federal Circuit decisions exploring the new standard’s outlines. Until then, patent litigants will face a degree of uncertainty regarding willfulness. Of course, defendants will generally be glad to have some uncertainty in exchange for plaintiffs’s higher willfulness hurdle.
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Reliance Upon Fed. Cir.’s Cursory Potential Invalidity Statements Avoids Willfulness
Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 4287503 (N.D. Ill. Dec. 4, 2007) (Coar, J.).*
Judge Coar granted defendant Sandoz’s Fed. R. Civ. P. 12(b)(6) motion to dismiss or in the alternative Fed. R. Civ. P. 12(c) motion for judgment on the pleadings, dismissing plaintiff Abbott’s willfulness claims Abbott alleged that Sandoz willfully infringed Abbott’s patent related to an extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL). At the time Sandoz entered the market with its generic version of Biaxin XL, the Federal Circuit had issued an opinion based upon an interlocutory appeal of a temporary restraining order, which included statements that Abbott’s patent was susceptible to invalidity and unenforceability argument. The Court held that Sandoz’s reliance on that opinion, regardless of the limited record it was based upon or its non-final nature was objectively reasonable, well above the In re Seagate objective recklessness standard.
* Click here for more on this case and related cases.
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Markush Language in Specification Does Not Limit Claims
Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 4287501 (N.D. Ill. Dec. 4, 2007) (Coar, J.).*
Judge Coar construed the claims of plaintiff Abbott’s patent related to an extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL), denied defendant Sandoz’s motion for summary judgment of noninfringement and granted Abbott summary judgment regarding anticipation, obviousness and inequitable conduct. Of particular interest, the Court held that the use of Markush group language – “selected from the group consisting of” – in the specification did not necessarily limit the construction of claim terms. The Court also noted that materiality of a reference in an inequitable conduct analysis was determined from the perspective of a reasonable examiner, not the patentee.
* Click here for more on this case and related cases.
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Prior Standing Ruling is Preclusive Absent License Revisions
Abbott Labs. V. Church & Dwight, Inc., No. 07 C 3428, 2007 WL 3120007 (N.D. Ill. Oct. 23, 2007) (Kennelly, J.).
Judge Kennelly denied defendant Church & Dwight’s (“C&D”) 28 U.S.C. Section 1404(a) motion to transfer this patent case to the District of New Jersey, where a related case between the parties was pending, and granted C&D’s motion to dismiss a claim that the New Jersey Court previously dismissed for lack of standing. In New Jersey, C&D sued plaintiff Abbott Laboratories (“Abbott”) alleging infringement of patents covering lateral flow immunology devices, and pregnancy and ovulation testing methods. Abbott counterclaimed alleging infringement of three patents, including U.S. Patent No. 6,534,320 (the “‘320 patent”). The New Jersey Court ultimately dismissed Abbott’s counterclaim, holding that Abbott was a nonexclusive licensee of the ‘320 patent and, therefore, lacked standing. The New Jersey Court also held that standing could not be cured by Abbott’s effort to involuntarily join its licensor Inverness pursuant to Fed. R. Civ. P. 19. Based upon the New Jersey Court’s ruling, this Court held that issue preclusion prevented Abbott from re-litigating its standing to sue. Unless Abbott revised its license agreement with Inverness, giving Abbott additional rights, the New Jersey Court’s ruling was preclusive. The Court, therefore, dismissed Abbott’s ‘320 patent infringement claim.
The Court denied C&D’s motion to transfer the case to New Jersey. The Court gave Abbott’s choice of forum deference. And the Court gave little weight to the parties’ ongoing New Jersey patent suit because the New Jersey Court dismissed Abbott’s counterclaims before making any substantive rulings. The New Jersey Court, therefore, would not have been in a better position to decide any issues in the case.
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Potential Reissue/Reexam Does Not Create Actual Controversy
Abbott Labs v. Baxter Healthcare Corp., No. 04 C 0836, Slip Op. (N.D. Ill. Sep. 28, 2004) (Guzman, J.).
Judge Guzman granted plaintiff Abbott Laboratories’ (“Abbott”) Fed. R. Civ. P. 15(a) motion to amend its Complaint dismissing claims regarding its U.S. Patent No. 6,444,859 (the “‘859 patent”). After the Federal Circuit held the parent of the ‘859 patent invalid, Abbott Labs v. Baxter Pharm. Prods., 471 F.3d 1363 (Fed. Cir. 2006), Abbott gave defendant Baxter Healthcare (“Baxter”) a covenant not to sue Baxter on the ‘859 patent (“Covenant”). Abbott, therefore, sought leave to dismiss its claims regarding the ‘859 patent. But Baxter argued that the claims should not be dismissed because the Covenant excluded any reissue or reexamination of the ‘859 patent, thereby creating an actual controversy. The Court held that Abbott’s potential suit based upon its potential reissue or reexam of the ‘859 patent did not create a current controversy. The Court, therefore, allowed Abbott to amend its Complaint dismissing claims regarding the ‘859 patent.
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Abbott & Andrx Settle Biaxin Litigation
Abbott Laboratories and Andrx Pharmaceuticals have settled their Northern District patent litigation over Andrx’s efforts to sell a generic version of Abbott’s extended release antibiotic Biaxin XL, Case No.05 C 1490 (discussed at length in the Blog’s archives). According to IP Law360 (subscription required), the settlement includes an agreement that Andrx will not market a generic version of Biaxin XL for, presumably, the remainder of Abbott’s patent term.
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Neither Federal Circuit Split Nor KSR Warranted Stay of a Preliminary Injunction Pending Appeal
Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 1549498 (N.D. Ill. May 24, 2007) (Coar, J.).
Judge Coar denied defendant Sandoz, Inc.’s (“Sandoz”) motion to stay the Court’s preliminary injunction pending appeal to the Federal Circuit pursuant to Fed. R. Civ. P. 62(c). The Court previously granted plaintiff Abbott’s motion for a preliminary injunction (you can read more about that decision and related cases in the Blog’s archives). The PI enjoined defendant Sandoz from selling a generic version of Abbott’s patented extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL). Sandoz argued that the PI should be stayed pending appeal because of conflicting Federal Circuit law regarding the Court’s claim construction and because of the Supreme Court’s KSR decision.
First, Sandoz argued that two different Federal Circuit panels had issued differing rulings construing the claims at issue. Judge Coar rejected this argument because the construction relied upon in the PI ruling was the Federal Circuit’s second, broader claim construction. The Court explained that the “only rational assumption” was that the second panel was aware of the constructions in the first, but relied upon something different in the record or identified a fact missed by the first panel. Further, the Court predicted that the Federal Circuit would not retreat from its second opinion to its first, prior opinion.
Second, the Court held that the KSR decision did not change its analysis of Sandoz’s likelihood of success on its obviousness argument. The Court provided a detailed explanation of KSR and its reasoning, but differentiated the current case because the Court held that one of the limitations in the Abbott claims did not exist in Sandoz’s cited combination of prior art references. Because the references did not disclose one of the elements of the claims, whether or not the Court used a strict application of the Federal Circuit’s teaching, suggestion or motivation test did not change the outcome of its analysis. Both the Federal Circuit’s and the Supreme Court’s standards required that all elements be disclosed by the combined prior art references.
Finally, the Court held that Sandoz had not provided sufficient evidence that it would be irreparably harmed. Sandoz argued that if it could not enter the market at the same time as other generics, which are not subject to PI’s, pharmacists would be reluctant to later restock their shelves with Sandoz’s generic version of the drug. But the Court reasoned that the lure of generics is their prices, not their brand recognition, so Sandoz should have no trouble re-entering the market at a later date should it prevail.
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