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Although argument week isn’t until next week, the Federal Circuit heard oral argument today in two cases. One was rescheduled from earlier this month for medical reasons. But the other,
GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., No. 18-1976, caught our eye because of how it came about procedurally. (It’s also super interesting substantively, but because we’re procedure nerds, we’re focusing on procedure today.) The case appears to represent the rare situation (first we’ve seen) where a Federal Circuit panel withdraws its own precedential opinion and asks for re-argument without public action by the en banc Court. And it provides a nice case study of how the rehearing process works at the Federal Circuit, so we thought we’d walk through it.
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Infinity Computer Products ( Infinity ) sued Oki Data in the District of Delaware for infringement of four patents. The District Court found the patents invalid due to indefiniteness and the Federal Circuit affirmed. This case serves to illustrate two important points in patent law: (i) taking contradictory positions during prosecution will be held against the applicant, and (ii) the Federal Circuit will take said contradictory positions to an unnecessary extreme in order to support a holding of indefiniteness.
Representative of the Infinity patents is U.S. Patent No. 6,894,811, claim 1 of which recites:
Amgen Inc v Sanofi (Fed Cir 2021) | McDonnell Boehnen Hulbert & Berghoff LLP jdsupra.com - get the latest breaking news, showbiz & celebrity photos, sport news & rumours, viral videos and top stories from jdsupra.com Daily Mail and Mail on Sunday newspapers.
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On October 2, 2020, the Federal Circuit issued a precedential opinion vacating a district court’s judgment as a matter of law and reinstating a jury verdict finding of induced infringement of a patented use that had been carved out of a generic applicant’s label.
GlaxoSmithKline LLC v. Teva Pharms. USA, Inc., 976 F.3d 1347 (Fed. Cir. 2020). We previously analyzed this opinion and its impact in
At issue in the case is whether Teva’s marketing of carvedilol first with a skinny label, and later an amended label including the carved out indication as required by FDA, induced infringement of GSK’s reissue patent, RE40,000 (“the ’000 patent”).
In a law review article entitled “The Death of the Genus Claim,”
1 which published in the aftermath of the Federal Circuit decision in
Idenix v. Gilead, 941 F.3d 1149 (Fed. Cir. 2019), the authors stated that, “in the past thirty years, there are virtually no significant examples of genus claims in the life science fields upheld on appeal as compliant with § 112(a) outside the unique context of . . . ‘interference” proceedings.’” The authors accused the Federal Circuit of “abandon[ing] a practical focus on whether others could make use of the claimed invention in favor of a fruitless search for the exact boundaries of that invention” and characterized the court’s “‘full scope possession’ theory [as] invalidat[ing] a genus claim unless the patent can show exactly which species within the genus will work as intended.”