We will be discussing one Ninth Circuit case and one Federal Circuit case during our weekly SoCal IP Institute meeting on Monday, July 9, 2012. Brief synopses are presented below.
Rearden LLC v. Rearden Commerce Inc., Case No. 10-16665 (9th Cir. June 27, 2012) (attached).
Plaintiff Rearden LLC filed suit against Rearden Commerce, asserting numerous claims relating to similarities in the parties’ marks and names. The US District Court for the Northern District of California granted Rearden Commerce’s motion for summary judgment as to plaintiff’s trademark claims. The district court found Rearden Commerce was entitled to judgment as a matter of law on the claims of false designation of origin under the Lanham Act, the Anticybersquatting Consumer Protection Act (“ACPA”), California’s common law of trademark infringement, and the California Unfair Competition Law (“UCL”). On appeal, the Ninth Circuit Court of Appeals vacated the district court, holding that genuine issues of material fact existed, which precluded summary judgment in favor of Rearden Commerce. The case was remanded for further proceedings.
Sciele Pharma Inc. v. Lupin Ltd., Case No. 2012-1228 (Fed. Cir. July 2, 2012) (attached).
Lupin filed an Abbreviated New Drug Application (ANDA) with the FDA to market a generic version of Fortamet, an extended-release tablet of metaformin hydrochloride. In response, the plaintiff filed a lawsuit asserting infringement of their Patent No. 6,866,866. Before the lawsuit had reached a final judgment, Lupin attempted to launch its generic product. The plaintiff obtained a preliminary injunction preventing Lupin from selling its product.
On appeal, Lupin argued that the ’866 Patent is obvious based on two prior art references that were before the PTO during prosecution. The Federal Circuit stated that whether or not a reference was previously considered by the PTO, the standard of proof is the same: clear and convincing evidence of invalidity. However, the fact that references were previously before the PTO could impact the weight the court or jury assigns to the evidence. The Federal Circuit concluded that the district court’s obviousness analysis was flawed because it incorrectly rejected Lupin’s substantive arguments on disclosure and motivation to combine. Because the district court incorrectly concluded that defendant failed to raise a substantial question of validity regarding the asserted claims of the patent, the grant of preliminary injunction to stop the sale of the generic was vacated.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 9, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.