Anticancer, Inc. v. Pfizer, Inc.
769 F.3d 1323
Fed. Cir.2014Background
- AntiCancer sued Pfizer (and later added Crown Bioscience) alleging infringement of patents covering fluorescence imaging of gene expression (GFP-linked promoters) used in cancer research.
- The Southern District of California required Preliminary Infringement Contentions under its Patent Local Rule 3.1; AntiCancer served its contentions shortly after amending its complaint, relying primarily on Pfizer/Crown publications and reserving rights to supplement.
- Defendants moved for summary judgment arguing AntiCancer’s contentions were defective because claim charts failed to map specific claim elements to accused activities.
- The district court authorized supplementation but conditioned permission on AntiCancer paying defendants’ attorneys’ fees and costs incurred in moving for summary judgment; AntiCancer objected and the court entered summary judgment of noninfringement.
- The Federal Circuit vacated the fee-shifting condition and the summary judgment, holding the district court abused its discretion by imposing a sanction without the explicit finding of bad faith required under Ninth Circuit law, and remanded for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court permissibly conditioned supplementation of Patent Local Rule 3.1 contentions on paying defendants' fees | AntiCancer: contentions complied with Rule 3.1 given information available pre-discovery; supplementation would follow discovery; no bad faith | Defendants: contentions were "woefully insufficient" and defendants incurred fees to move for summary judgment to force clarity | Court: Fee-shifting as a condition was an improper sanction absent explicit Ninth Circuit finding of bad faith; vacated condition and summary judgment |
| Whether AntiCancer's Preliminary Infringement Contentions satisfied Rule 3.1 with respect to specific claim elements (promoter monitoring; delivering cells; metastasis) | AntiCancer: charts outlined infringement theories and pointed to publications; fuller specifics required discovery and are not required at PIC stage | Defendants: cited publications did not specifically identify each claim element or explain how defendants practiced them | Court: District could require supplementation, but the deficiencies did not justify fee-shifting sanctions; no bad faith shown |
| Standard of review for imposition of inherent-power sanctions | AntiCancer: sanctions require explicit bad faith finding under Ninth Circuit precedent | Defendants: (implicit) district court has broad inherent authority to manage proceedings and sanction misconduct | Court: Applied Ninth Circuit law — explicit finding of bad faith required before inherent-power fee awards; district court abused discretion by not making such a finding |
| Proper procedural treatment of PIC sufficiency versus claim construction/discovery | AntiCancer: PICs need only crystallize theories and need not prove infringement; premature to resolve merits pre-discovery/claim construction | Defendants: PICs must be sufficiently specific to give defendants fair notice and to avoid fishing expeditions | Court: PICs should outline theories to guide discovery; district court may demand amendment but cannot impose inherent-power fee sanction absent bad faith |
Key Cases Cited
- O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355 (Fed. Cir. 2006) (distinguishes substantive patent rule issues from regional procedural law and explains purpose of early infringement contentions)
- Chambers v. NASCO, Inc., 501 U.S. 32 (U.S. 1991) (recognizes district courts’ inherent authority to sanction for bad-faith conduct)
- Roadway Express, Inc. v. Piper, 447 U.S. 752 (U.S. 1980) (discusses inherent powers and bad-faith prerequisite for certain sanctions)
- Primus Auto. Fin. Servs., Inc. v. Batarse, 115 F.3d 644 (9th Cir. 1997) (requires explicit finding of bad faith before awarding sanctions under a court’s inherent powers)
- Monsanto Co. v. E.I. Du Pont de Nemours & Co., 748 F.3d 1189 (Fed. Cir. 2014) (inherent-power sanctions in patent cases reviewed under regional circuit law)
- Alyeska Pipeline Serv. Co. v. Wilderness Soc’y, 421 U.S. 240 (U.S. 1975) (discusses shifting of attorney fees in exceptional circumstances and court authority)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. 1986) (summary judgment standard)