Reckitt Benckiser Inc. v. Watson Laboratories, Inc., No. 2011-1231 (Fed. Cir. July 7, 2011) (Judges Lourie, Linn, and Dyk)
When Judge Lourie sits on a panel that hears a case involving a chemical or pharmaceutical product, he tends to write the panel opinion (if he is in the majority). This case is no exception. In this appeal, the Federal Circuit considered the question of whether Watson’s generic alternative to Mucinex®, which is an expectorant used to treat congestion, infringes Reckitt’s patent. It agreed with the district court that Reckitt limited its patent claims during prosecution to avoid references, and could not cover products that lack two tablet portions (bi-layer tablets). Reckitt’s claims were limited to drug formulations with guaifenesin (the active ingredient), which have bi-layer tablets that release the drug at different times. The court also rejected Reckitt’s argument that the active ingredient portions on the surface of Watson’s single-layer product is immediately released and therefore makes it equivalent (because it is bioequivalent) to its own bi-layer product and within its patent coverage. Because Watson’s product is a single layer tablet with one guaifenesin formulation, it did not infringe.
The court also stated that this case appears to invoke the dedication doctrine, which we don’t often see in patent litigations. See slip op. at 14 n.2. If you describe a technology in your patent, but fail to claim it, you have dedicated it to the public and cannot recover it through an infringement analysis using the doctrine of equivalents. This is one reason why the patent claims should be carefully crafted to cover the technology that is considered the invention. If you fail to do that, you may not get a second bite at the apple and fix the issue with a creative infringement position. The court didn’t need to address dedication, however, because it already found that prosecution history estoppel limited the claims.
Read the Reckitt opinion here.
Retractable Technologies, Inc. v. Becton, Dickinson & Co., No. 2010-1402 (Fed. Cir. July 8, 2011) (Chief Judge Rader, Judges Plager and Lourie)
Retractable Technologies has patents on a medical syringe, with a needle that retracts into the syringe body after use. Retractable needles are nice because they are less likely to stick the user or contaminate the needle. In 2007, Retractable Technologies sued Becton for patent infringement in good ole’ Texas, and won. Becton asked the trial court to overturn the jury’s infringement judgment, but the district court said “no.” Becton filed an appeal, and asked the Federal Circuit to reconsider two claim construction issues, a factual determination relating to infringement, the jury’s infringement judgment, an evidentiary ruling to exclude certain discovery responses and letters to the court, and two invalidity arguments it made (and lost) below. (Note: if you file an appeal and you are thinking about raising five issues, you should rethink that approach. Pick two to three issues, at most, unless you absolutely need to appeal more issues in order to undo the damage that occurred below.)
The Federal Circuit did not like the trial court’s construction of the term “body” to mean a hollow outer portion of the needle that houses the syringe components. Even though a dependent claim specifically covered a one-piece body, a limitation that was not found in the independent claim, the court read the specification to explicitly distinguish prior art syringes that had multiple pieces that make up the body. Since Retractable Technologies described its new syringes with a one-piece body in the patent, it was stuck with that position in litigation. This also meant that Becton’s large syringes with two-piece bodies cannot infringe the patents under the doctrine of equivalents (which can’t be used to cover prior art) and that Becton’s larger syringes do not infringe the patent claims.
Otherwise, the panel affirmed the district court on the rest of the issues that Becton appealed.
Read the opinion here.
Respironics, Inc. v. Invacare Corp., Nos. 2010-1447, -1505 (Fed. Cir. July 8, 2011) (Judges Bryson, Mayer, and Dyk)
This is the second time this case relating to respiration technologies has been considered by the Federal Circuit. In 2008, the Federal Circuit fixed some claim constructions that it disagreed with and told the trial court it was wrong to grant summary judgment of noninfringement to Invacare. The court also remanded an anticipation issue and noted that the trial court had not identified any claim limitation that was not present in the Younes article on respiratory therapies. This time, it considered invalidity and infringement issues that both parties appealed.
The Federal Circuit determined that the trial court decided a patent issue incorrectly on summary judgment (it’s not a court that hears a lot of patent cases). While the trial court decided that no reasonable jury could find the patents invalid for anticipation by the Younes article, the appellate court strongly disagreed. So much, in fact, that it not only reversed the decision. It actually concluded that no reasonable jury could find that the patents are not anticipated by the Younes article and directed entry of judgment of anticipation.
So the Federal Circuit gave the trial court some clues on what it was thinking on the anticipation issue when it remanded the case three years ago. But it seems that the trial court did not follow the breadcrumbs to the outcome that the Federal Circuit thought was appropriate.
Read the opinion here.
General Protecht Group, Inc. v. Central Purchasing, LLC, No. 2011-1115 (Fed. Cir. July 8, 2011) (Judges Linn, Schall, and Dyk)
This is another case that revolves around a contract interpretation issue. This time, the court interpreted a “forum selection” clause, which I like to call a “where you can sue me next time” clause. Several years ago, a number of companies that manufacture electrical equipment and wiring components settled a patent lawsuit brought by Leviton in a confidential agreement. That agreement included a covenant not to sue with respect to the accused products and future products that conform to a design that had been shared with Leviton during settlement discussions. It also made the New Mexico district court the appropriate court to hear any disputes relating to the settlement agreement terms.
So what happened next? Well, new patents issued from the same family as the two patents involved in the first lawsuit. Leviton filed a lawsuit in California and requested an import investigation by the International Trade Commission (ITC), alleging that the same companies infringe these new patents. Response: only the New Mexico court can decide these issues, and by the way, we don’t infringe because we have a license and you breached our settlement agreement by filing these new suits. The accused infringers filed their own defensive suit in New Mexico, and that court granted their preliminary injunction, enforcing the “where you can sue me next time” clause. Leviton appealed that preliminary injunction judgment, and the Federal Circuit considered it on an expedited basis. But the appellate court did not grant a stay of the injunction, so Leviton dismissed its California lawsuit and moved the ITC to dismiss its action (that request was granted) so that it was not in contempt of the injunction.
On appeal, the Federal Circuit considered Leviton’s three arguments regarding why the settlement agreement clause should not cover these new lawsuits. It rejected Leviton’s position that the clause doesn’t cover these suits because the only possible relationship between the new lawsuits and the old one is an implied license defense based on the prior settlement agreement. It also rejected Leviton’s view that the earlier agreement could not give rise to an implied license to newly-issued patents that are children of the patents at issue in the first lawsuit. Finally, it agreed with the lower court’s application of the preliminary injunction factors in this case (it reviews these decisions using an abuse of discretion standard).
This is an interesting opinion. The court’s analyses of whether the new patent dispute arises out of or relates to the prior settlement agreement and whether an implied license exists are worth a careful read. (Read it here.)