EFI v. Coyle on declaratory judgment actions (DJs)
Posted on May 18, 2008 in Generic pharmaceuticals
The case of EFI v. Coyle gives information on what can happen to an overly aggressive patent holder in a case wherein the alleged infringer files a declaratory judgment (DJ) action. On these facts, an initial dismissal of the DJ action was reversed by the CAFC. The dismissal of a declaratory judgment action is reviewed for abuse of discretion (eg, Minn Mining v Norton, 929 F2d 670) EFI argued that the relevant uncertainty was created by Coyle's persistent and forceful threats of patent litigation. The CAFC agreed with EFI that the uncertainty and delay regarding legal rights caused by the actions of Coyle were cognizable under the DJ Act, citing Goodyear, 824 F2d 953. The CAFC cited text in Arrowhead, 846 F2d 731, about "scare the customer and run tactics." The fact that EFI was "certain" it would prevail was not the relevant consideration. EFI also criticized the district court's characterization of EFIs DJ action as a race to the court house, and the CAFC agreed, citing Genentech 998 F2d at 938. The district court's dismissal of EFI's DJ action was reversed and remanded. cheap cialis buy cheap cialis buy cilais generic cialis
Roscoe v. Mirror Lite on testimony; inequitable conduct
Posted on May 10, 2008 in Generic pharmaceuticals
In the nonprcedential Roscoe v, Mirror Lite, the CAFC noted that testimonial evidence of invalidity must be corroborated, citing to Finnigan v. ITC, 180 F3d 1354. It is worth noting that the testimonial evidence in the Finnigan case was by Keith Jefferts, who was a disinterested third party. So when the court noted that the corroboration could be by testimonial evidence other than from the inventor or interested party, remember that corroboration is required even when the initial testimony is from a disinterested party (Jefferts had no connection to Bruker-Franzen or to Finnigan). Of the alleged corroborating evidence in this case (Exhibit 110), the CAFC noted that the district court was not one skilled in the art and should not have assessed technical aspects on its own, citing Dayco, 329 F3d 1358. In the inequitable conduct portion of the case, the CAFC was not troubled that a witness described the term "convex" one way in the patents and another way in testimony, because in testimony he admitted it had two different meanings.
Supreme Court heard oral arguments in MedImmune v. Genetech
Posted on April 19, 2008 in Diabetes erectile dysfunction
Oral arguments in MedImmune v. Genentech were heard on October 4. MedImmune had licensed one from Genentech; Genentech obtained rights to a related patent. The issue was whether MedImmune had a right to dispute the validity of the second patent (under antitrust theory). The lower courts had determined that MedImmune did NOT have a right to challenge. Petitioner MedImmune argued against the CAFC's rule that a patent licensee cannot bring a declaratory judgment action questioning the validity of the licensed patent as long as the licensee has not breached the license agreement. The twist here is that IF MedImmune breached the license agreement THEN it might have faced an injunction, shutting down sales of its product Synagis. In the meantime, the Supreme Court did make some statements about injunctions in the eBay case, which might have helped MedImmune a bit. MedImmune also brings up Lear v. Adkins, 395 U.S. 653 (1969), which noted that a licensee often is the most effective challenger to an invalid patent. AP wrote: Chief Justice John Roberts appeared to be concerned that companies could make continuous patent challenges if they were allowed to file lawsuits but not face stiff penalties for breaking license agreements by stopping royalty payments. "How do you ever end these things? Let's say they have this dispute, they bring it to litigation, and they settle it," he said. "Instead of paying a license fee of 50 cents, it's going to be 40 cents, and we'll go on. Then they can sue again, I take it." Patent attorneys said if the case is decided in MedImmune's favor, it could lead to a flood of patent lawsuits because companies could challenge patents without risking legal penalties. But Washington attorney Harold C. Wegner, who watched Wednesday's arguments, said Roberts did not seem convinced by MedImmune's case. "The chief justice was very troubled by the idea," Wegner said. "What would stop the licensees from suing again and again?" generic cialis cheap viagra buy cheap cialis cialis
SD Cal Order vacated in Qualcomm v. Nokia
Posted on April 14, 2008 in Diabetes erectile dysfunction
In Qualcomm v. Nokia, the CAFC considered the Federal Arbitration Act. If a district court is satisfied that the issue in question is arbitrable, then it must stay the trial of the action [9 USC section 3]. The CAFC cited Microchip Tech, 367 F.3d at 1356. Judge Newman dissented and would have affirmed the district court. viagra cheap viagra buy cilais cialis