Conflict Between Granting a Preliminary Injunction and Staying the Case Pending Appeal of the Injunction

In Fresenius Kabi USA, LLC v. Fera Pharmaceuticals, LLC, et al., Case No. 15-3654 (D.N.J.) the district court recently denied Fresenius’s motion to dismiss Fera’s antitrust counterclaims, but simultaneously decided to sever and stay those claims pending resolution of the patent infringement claims. Additionally, the court denied Fresenius’s motion to stay the patent infringement claims pending resolution of Fera’s appeal of the district court’s earlier grant of a preliminary injunction.

The case is premised on three patents directed to formulations of levothyroxine, which is a hormone generated by the thyroid. Fresenius alleges that Fera will infringe the patents and Fera alleges, inter alia, inequitable conduct and raises two antitrust counterclaims. Meanwhile, Fresenius also moved for a preliminary injunction preventing Fera from launching its generic products at-risk. Of particular interest in this decision is the district court’s discussion and reasons for denying Fresenius’s motion to stay the litigation pending resolution of Fera’s interlocutory appeal of the preliminary injunction. Continue reading this entry

Recent Guidance from the Federal Circuit on the Doctrine of Equivalents in Cases Involving Chemical Compositions

In Mylan Institutional LLC, et al. v. Aurobindo Pharma Ltd., et al., Case No. 2017-1645, the Federal Circuit affirmed the district court’s grant of a preliminary injunction as to one of three patents-in-suit, while finding that there was error in granting the injunction with respect to the other two patents.

The patents-in-suit related to ISB, a dye used to map lymph nodes, with two of the patents (the ’992 and ’616 patents) directed to the process for preparing ISB, and one of the patents (the ’050 patent) directed to an ISB compound “having a purity of at least 99.0% by [high performance liquid chromatography].” Apicore is the owner of, and Mylan is the exclusive licensee of, the patents-in-suit. Continue reading this entry

Supreme Court Complicates Design Patent Damage Calculation – Apple v. Samsung

On December 6, 2016, the Supreme Court issued a rare unanimous decision on the issue of damages for design patent infringement that continues the Apple v. Samsung smartphone legal odyssey. It also marks only the second time in over 100 years that the court has issued a substantive decision in a design patent case. But the result could mean significant challenges in the calculation of damages for design patents and the need for additional factual and expert input, similar to the damage calculation for a utility patent.

In a decision written by Justice Sotomayor, the court reversed the Federal Circuit holding that in the case of a multicomponent product, the relevant “article of manufacture” for arriving at a § 289 damages award need not be the end product sold to the consumer, but may be only a component of that product. The court also remanded the case back to the Federal Circuit for additional briefing on what constitutes an “article of manufacture” in the context of the relevant Apple design patents at issue. Continue reading this entry

The Decision To Grant Rehearing En Banc In Apple v. Samsung

On October 7, 2016, the Federal Circuit issued another decision in the ongoing patent litigations between Apple and Samsung that began in the Northern District of California. The district court had found at summary judgment that Samsung infringed one of Apple’s patents.  The jury subsequently determined that Samsung infringed two others, and that the asserted claims were not invalid.  The district court then denied Samsung’s motions for judgment as a matter of law (“JMOL”) and entered judgment accordingly.  In the subsequent appeals (2015-1171, 2015-1195, 2015-1994) a panel of the Federal Circuit (Chief Judge Prost, Judge Dyk, and Judge Reyna) reversed the district judge’s denial of JMOL with regard to the jury’s verdict of infringement of one patent and non-obviousness of two others.

Apple sought rehearing en banc, arguing that the panel had erred by relying upon “extra record evidence” to modify one of the parties’ agreed-upon claim constructions – evidence that the panel had located through its own independent research.  According to Judge Dyk’s dissent from the opinion of the en banc majority, for the first time in 26 years the Court granted en banc review in an obviousness case.  And the Court did so without further briefing from the parties, amici, or the government.

The en banc majority opinion and three dissents (authored by, not surprisingly, the members of the original panel) stretch more than one hundred  pages and include a fascinating obviousness analysis focusing on, in particular, motivation to combine and the role of secondary considerations.  The decision is, in this author’s opinion, a “must read” for that reason alone.  This article, however, concerns the Court’s grant of en banc review in the first place, which all three dissenting Judges condemned in their opinions.

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Hillary Clinton's IP Litigation Experience

Many people are surprised to learn that Hillary Clinton was an intellectual property attorney when she practiced law from 1977-1992 for the Rose Law Firm.  While the New York Times has reported that former colleagues cannot remember any cases she tried and that court reporters in Little Rock say she appeared in court infrequently, there are at least three reported court decisions on which she is named as counsel.  A review of those decisions provides an interesting glimpse into Clinton’s background with intellectual property.

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