Allergan, Inc. v. Apotex Inc.
754 F.3d 952
| Fed. Cir. | 2014Background
- Apotex appeals a district court ruling that Allergan’s '029 and '404 patents are valid and infringed, contending they are invalid for anticipation and obviousness.
- '029 covers a method of treating hair loss by prostaglandin F-2alpha analogs; the patentee defines ‘treating hair loss’ as arresting/reversing hair loss and promoting hair growth.
- '404 covers topical bimatoprost to treat eyelash hair loss and promote eyelash growth; priority dates and inventor actions are contested.
- The district court held claims not anticipated or obvious and found infringement; the district court injunction against sale was issued.
- The panel reverses the district court on validity and vacates the injunction, addressing claim construction and invalidity issues.
- The dissent criticizes the obviousness ruling over Johnstone, affirming nonobviousness issues at least with respect to the '029 patent
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether ‘treating hair loss’ is limited to arresting/reversing hair loss | Allergan argues treating includes promoting growth as per the patent text | Apotex argues ‘and’ requires both arrest/reversal and growth | Affirmed: treating hair loss may include promoting growth without arresting hair loss |
| Whether Johnstone anticipates the '029 patent | Johnstone discloses saturated and unsaturated bonds; may anticipate | Johnstone disclosure too sparse/ambiguous to anticipate; the proviso limits scope | Reversed: Johnstone does not clearly and unambiguously anticipate the full scope of the '029 claims |
| Whether the '029 claims are obvious in view of Johnstone and the '819 patent | Combination yields obviousness due to shared pharmacology | Nonobvious due to breadth of claims and unpredictable hair growth art. | Reversed: the district court erred in its scope-of-claims analysis; claims deemed obvious |
| Whether Brandt references render the '404 patent obvious or prior art | Brandt disclosures show eyelash growth with bimatoprost | Inconclusive conception date; authorship issues; not prior art | Reversed: Brandt references establish obviousness with Johnstone in light of full record; conclusions on nonobviousness reversed |
Key Cases Cited
- Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373 (Fed.Cir. 2003) (anticipation requires each limitation disclosed; inherent disclosures allowed)
- Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238 (Supreme Court 2011) (clear and convincing evidence of invalidity required)
- In re Kao, 639 F.3d 1057 (Fed. Cir. 2011) (scope/benefits of claims must be commensurate with evidence on secondary considerations)
- KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (Supreme Court 2007) (obviousness requires reasoned, predictable solution based on prior art)
- Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348 (Fed.Cir. 2007) (motivation to combine and reasonable expectation of success considered)
- Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342 (Fed.Cir. 1999) (anticipation/inherent anticipation questions reviewed for clear error)