THE RESEARCH FOUNDATION OF STATE UNIVERSITY OF NEW YORK and NYU v. GALDERMA and Mylan

link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1523.Opinion.8-2-2013.1.PDF


After a four-day bench trial addressing five patents, the district
court granted the patent-asserting parties relief on one
patent: it rejected invalidity challenges to the asserted
claims of that patent and held that those claims would be
infringed by the proposed manufacture, use, and sale of
generic versions of Oracea®. Research Found. of State
Univ. of New York v. Mylan Pharms. Inc., 809 F. Supp. 2d
296 (D. Del. 2011). The district court denied relief on the
other patents, some of which it held invalid as to all of the
asserted claims. Id. at 307. Appeals and cross-appeals
are now before this court.

We affirm the district court in every respect, except
with regard to three dependent claims of the Amin Patents,
namely, claims 2 and 14 of U.S. Patent No.
5,789,395 and claim 2 of U.S. Patent No. 5,919,775. And
we find only that issue to warrant discussion, given the
extensive analysis of the district court. We conclude that
the district court erroneously (though understandably)
applied its finding of anticipation of the independent
claims of the Amin Patents without addressing the additional
claim elements of the three specified dependent
claims. (...)

A determination that a patent claim is invalid as anticipated
under 35 U.S.C. § 102 “requires that a prior art
reference disclose every limitation of the claimed invention,
either explicitly or inherently.” Liebel-Flarsheim Co.
v. Medrad, Inc., 481 F.3d 1371, 1381 (Fed. Cir. 2007).
What suffices to anticipate one claim may not suffice for
another claim containing different elements. In particular,
when a dependent claim adds an element to an independent
claim, and the challenger sufficiently raises the
point, an anticipation analysis must examine the additional
element—which, by definition, it will not have been
necessary to analyze in assessing anticipation of the
independent claim not containing the added element. See
Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d
1358, 1370-71 (Fed. Cir. 2003). (...)

Even if the larger dosage references did not anticipate
the three dependent claims at issue for that reason—
a question on which we express no view—reversal would
not be appropriate because the district court made no
findings about what the lower dosage references disclosed
expressly or inherently. Without such findings, this court
cannot rule out anticipation of the three dependent claims
(let alone any other preserved grounds of invalidity of
those claims). See Research Corp. Techs., Inc. v. Microsoft
Corp., 536 F.3d 1247, 1254-55 (Fed. Cir. 2008). Thus, we
go no further than to vacate the invalidity judgment as to
these three claims.

We do so despite readily understanding how the district
court likely came to overlook the additional elements
of these dependent claims. In their post-trial papers, the
patent-asserting parties mentioned the additional elements
of these claims in a proposed finding of fact, Galderma’s
Post-Trial Proposed Findings of Fact at 23, ¶ 162
Research Found. of State Univ. of New York, 809 F. Supp.
2d 296 (Civ. No. 09-184), but focused their arguments on
the independent claims, specifically, on whether the eight
identified prior-art references inherently disclosed use of
a tetracycline to inhibit endogenous nitric-oxide production.