Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
Luv N’ Care, Ltd. v. Lindsey Laurain, Appeal Nos. 2022-1905, -1970 (Fed. Cir. Apr.12, 2024)
In this week’s Case of the Week, the Federal Circuit affirmed the district court’s bench trial decision that unclean hands barred patentee Eazy-PZ LLC (“EZPZ”) from seeking relief, and also addressed issues concerning inequitable conduct, patent invalidity, and attorneys’ fees and costs under 35 U.S.C. § 285. The case involves U.S. Patent No. 9,462,903 and U.S. Design Patent No. D745,327, both owned by EZPZ and directed to a “self-sealing dining mat with integrated tableware” aimed to prevent toddlers from spilling food during mealtimes. The dining mat prevents displacement by creating “a partial vacuum” when one attempts to lift the planar portion of the mat away from the underlying surface.
Luv n’ Care (“LNC”), a manufacturer of dining mats for toddlers, filed a declaratory judgment action against EZPZ in the district court seeking judgment that the ’903 and ’327 patents were invalid and unenforceable. EZPZ asserted that LNC had infringed the patents, among other counterclaims. The district court held that: (1) the ’903 patent was invalid due to obviousness over prior art; (2) LNC failed to prove inequitable conduct because EZPZ’s misrepresentations that the prior art “did not exhibit self-sealing functionality” were not material and did not show a specific intent to deceive the USPTO; and (3) EZPZ’s litigation misconduct amounted to “unclean hands” that barred EZPZ’s recovery. However, the district court denied LNC’s motion for “exceptional case” attorneys’ fees and costs.
ALSO THIS WEEK
Salix Pharmaceuticals, Ltd. v. Norwich Pharmaceuticals, Inc., Appeal Nos. 2022-2153, -1952 (Fed. Cir. Apr. 11, 2024)
In an appeal from a district court judgment and injunction in an ANDA case, the Federal Circuit affirmed. The case involved a number of patents that cover rifaximin, an antibiotic used to treat hepatic encephalopathy (HE) and irritable bowel syndrome (IBS-D). The Federal Circuit affirmed findings by the district court that some of the patent claims were invalid as obvious, and found no clear error in the district court’s assessment of the prior art.
However, the district court found the patents directed to HE were not invalid and that Norwich had infringed those claims. The district court ordered the FDA to defer final approval of the ANDA until the expiration of the infringed patent. Norwich thereafter amended its ANDA to carve out HE use, and moved the district court to modify the injunction, so Norwich could sell its product for use in treating IBS-D alone. The district court denied that motion, and Norwich appealed. The Federal Circuit affirmed. The Court construed the Hatch-Waxman Act such that the Court’s Order applied to the ANDA as filed, and did not preclude Norwich from filing a separate ANDA focused on particular, non-infringing uses. Applying Rule 60, the Federal Court held that the district court had not abused its discretion in declining to modify its injunction based on the amended ANDA.
Judge Cunningham dissented with respect to the majority’s obviousness determinations.
The opinion can be found here.
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt
Jason A. Wrubleski, Shareholder
Contributors:
Brittani Gambrell, Associate