Allergan, Inc. v. Sandoz, Inc.
681 F. App'x 955
| Fed. Cir. | 2017Background
- Allergan owns multiple continuation patents claiming topical bimatoprost treatments for eyelash/hair growth; the dispute here centers on the later-issued ’953 patent (claims 8, 23, 26 asserted).
- Earlier litigation (Allergan I–III) resulted in this court holding certain earlier claims (notably of the ’404 and related patents) obvious; Allergan II reversed some district-court invalidity findings previously entered against Allergan.
- During prosecution of the ’953 application, Allergan submitted ex parte declarations attempting to negate two prior‑art references by showing inventor authorship (to avoid § 102(a) prior-art status). The PTO issued the ’953 patent.
- Sandoz moved to dismiss the infringement complaint under Rule 12(b)(6) based on collateral estoppel (issue preclusion), arguing the Asserted Claims raise the same invalidity issues decided previously; the district court dismissed and declared the ’953 patent invalid as obvious.
- The Federal Circuit affirmed dismissal for defendants including Sandoz with respect to the three asserted claims (8, 23, 26) but reversed as to unasserted claims (1–7, 9–22, 24–25), holding the district court lacked jurisdiction to invalidate claims that Allergan did not assert.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Application of collateral estoppel to the ’953 Asserted Claims | Allergan: Asserted Claims differ (require "eyelash darkness") so prior litigation did not decide same issue | Sandoz: Asserted Claims are substantially the same as previously invalidated claims; differences are not material | Court: Identity satisfied — prior proceedings addressed darkness and broader growth attributes; collateral estoppel applies |
| Whether the darkness limitation was actually litigated previously | Allergan: Prior cases never briefed or decided "darkness" specifically | Sandoz: Darkness flowed from claim constructions and trial record in prior cases | Court: Actually litigated — claim construction and bench trial addressed pigmentation/darkness; element met |
| Whether Allergan had a full and fair opportunity to litigate (ex parte evidence issue) | Allergan: Could not present ex parte PTO declarations in prior court cases; appellate language changed the standard for removing one’s own work from §102(a) | Sandoz: Allergan had chance to litigate; appellate decision did not change Katz standard | Court: Allergan had full and fair opportunity; Allergan II did not change governing Katz standard; element met |
| Scope of district court judgment as to unasserted claims | Allergan: District court lacked jurisdiction to invalidate unasserted claims (not in operative complaint) | Sandoz: Sought invalidation broadly | Court: Reversed district court as to unasserted claims — no case or controversy for those claims; only the asserted claims could be adjudicated |
Key Cases Cited
- Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311 (Fed. Cir. 2015) (apply regional circuit law for collateral estoppel generally)
- Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333 (Fed. Cir. 2013) (slightly different claim language can still cover substantially same invention for preclusion)
- Allergan, Inc. v. Apotex, Inc., 754 F.3d 952 (Fed. Cir. 2014) (prior Federal Circuit disposition addressing obviousness and evidentiary issues)
- Katz v. Lear Siegler, Inc., 687 F.2d 450 (CCPA 1982) (one’s own work may not be prior art under § 102 if attributable to inventor)
- Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313 (1971) (principles on full and fair opportunity to litigate and preclusive effect)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (motivation to combine prior art in obviousness analysis)
- Combs v. Richardson, 838 F.2d 112 (4th Cir. 1988) (‘‘actually litigated’’ standard for preclusion)
- Collins v. Pond Creek Mining Co., 468 F.3d 213 (4th Cir. 2006) (elements for collateral estoppel in Fourth Circuit)