Wednesday, August 27, 2014

CAFC in Ferring v. Watson: " but silence does not answer the question of infringement "

There was good news and bad news for Ferring in the case involving Watson concerning Lysteda® .
The good news: the claims were not obvious. The bad news: Watson did not infringe.

The determination of non-obviousness was direct.

In this case, the cited prior art references neither set
forth the limitations
required by the asserted claims, nor
provided any reason or motivation to combine those
teachings to derive the claimed formulations
with specific dissolution profiles. Accordingly, the asserted claims
have not been shown to be invalid under §103.

As to infringement, the filing of an ANDA alone does not mean that
a produced product infringes.

The [ANDA] filing only constituted a technical act of infringement for juri
sdictional purposes. J.A. 2192–93, 2248–56, 2316.
As we have explained, once jurisdiction is established,
the ultimate infringement inquiry provoked by such filing is
focused on a comparison of the asserted patent claims
against the product that is likely to be sold following
ANDA approval and determined by traditional patent law
principles. Warner - Lambert Co. v. Apotex Corp., 316 F.3d
1348, 1365 (Fed. Cir. 2003); Abbott Labs. v. TorPharm, Inc.
, 300 F.3d 1367, 1373 (Fed. Cir. 2002); Bristol - Myers
Squibb Co. v. Royce Labs., Inc. , 69 F.3d 1130, 1135 (Fed.
Cir. 1995)

Ferring relied on experimental outliers for infringement.

We accordingly do not agree
with Ferring or the district court
that reliance on such anomalies proves infringement by a
preponderance of the evidence in this case.

Link to case:

As to dependent claims:

Becton Dickinson & Co. v. C.R. Bard, Inc.
, 922 F.2d 792, 798 (Fed. Cir. 1990);
Wahpeton Canvas Co. v. Frontier, Inc., 870
F.2d 1546, 1552 n.9 (Fed. Cir. 1989) (“One who does not infringe an
independent claim cannot infringe a claim dependent (and
thus containing all the limitations of) that claim.”).


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