SANOFI-AVENTIS U.S., LLC. v. DR. REDDY’S LABORATORIES, INC.

SANOFI-AVENTIS U.S., LLC. v. DR. REDDY’S LABORATORIES, INC., Appeal No. 2018-1804, 2018-1808, 2018-1809 (Fed. Cir. August 14, 2019).  Before Lourie, Moore and Taranto.  Appealed from D. N.J. (Judge Shipp). (Statutory Disclaimers; Obviousness)

Background:

Sanofi sued Dr. Reddy’s and a number of other defendants for infringement of two of its patents relating to treatment of drug-resistant prostate cancers.  The district court held that some claims (hereinafter “asserted claims”) of one patent (hereinafter “592 Patent”) were invalid as obvious.  The district court held that some claims of a second patent (hereinafter “170 Patent) were not invalid as obvious.

Sanofi had filed a statutory disclaimer of the asserted claims after an inter partes review of the 592 Patent had found these claims, and some others, unpatentable, but before the obviousness finding of the district court.  Sanofi appealed the invalidity decision with respect to the 592 Patent claims, asserting a lack of case or controversy with regard to the asserted claims, and that the obviousness finding is a consequence of a nonexistent case or controversy.

Some of the defendants cross-appealed, asserting that the claims of the 170 Patent would have been obvious.  The district court heard testimony of seven witnesses and regarding seventeen prior art references and found that the claims would not have been obvious.

Issues/Holdings:

Did the district court err in finding that a valid case or controversy existed for reviewing the asserted claims of the 592 Patent?  Yes, vacated.  Did the district court err in finding that the claims of the 170 Patent would not have been obvious?  (continue reading)

Summary by:  Joel Gotkin

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