*1 Conclusion III arise I and Count Count
Because facts, operative
from the same Trusted In- previously asserted
claims court, CFC in federal district
tegration are these claims barred
properly held however, by erred,
by § 1500. The CFC II because does
dismissing Count operative substantially the same
arise claims. Accord- district court
facts as the II to Count apply does not
ingly, jurisdic- subject has matter the CFC claim.
tion over that
AFFIRMED-IN-PART, REVERSED-
IN-PART, AND REMANDED
Costs party shall bear own costs.
Each Sanofi-Synthelabo,
SANOFI-AVENTIS, Bristol-Myers Squibb Holding Partner-
Pharmaceuticals Plaintiffs-Appellees,
ship, Apotex Corp., INC. and
APOTEX
Defendants-Appellants.
No. 2011-1048. Appeals,
United States Court
Federal Circuit. 18, 2011.
Oct. *3 Cravath, Chesler, &
Evan R. Swaine NY, LLP, York, Moore, argued for of New him on the brief plaintiffs-appellees. With J. Stark and David Green- were Richard Robert counsel on the brief were wald. Of Baechtold, Murnane and L. John D. Wil- Celia, Solander, Fitzpatrick, liam E. Scinto, York, Harper of New NY. & Breisblatt, Fatten Muchin & Robert B. LLP, Rosenman, IL, Chicago, argued him on defendants-appellants. With Eric was Cohen. Of counsel brief C. P. Stephen was Benson. SCHALL, NEWMAN,
Before MOORE, Judges. Circuit filed Opinion for Circuit Judge Judge MOORE. Circuit dissents-in-part. NEWMAN MOORE, Judge. Drug Circuit an Abbreviated Application New (ANDA) with the United States Food and (collec- Apotex Corp. Inc. and (FDA) Drug seeking ap- Administration Apotex) appeal tively, the United States proval generic the sale of clopidogrel District Court for the District of Southern prior bisulfate to the expiration tablets New York’s award (the 4,847,265 U.S. Patent No. '265 pat- Sanofi-Synthelabo, ent). I, 470 Plavix 1372-73. The Bristol-Myers Squibb Sanofi Pharma- submission included a paragraph IV certi- Holding Partnership (collectively, ceuticals pursuant fication 21 U.S.C. Sanofi) holding and its Inc. is *4 355(j)(2)(A)(vü)(IV) asserting that jointly severally damages. and liable for patent '265 is invalid. Id. at 1373. In Inc., v. Apotex 748 Sanofi-Aventis response submission, to the Sanofi filed (S.D.N.Y.2010). F.Supp.2d Apotex 293 21, 2002, on suit March alleging that the appeals also the district court’s denial of filing of the ANDA act constituted an motion supplemental its to a leave file 271(e)(2). infringement under 35 U.S.C. answer, defenses, affirmative and counter- Although Apotex Id. pro- admitted that its patent pleading claims misuse and breach posed generic product infringe claim of contract. J.A. 2.1-2.22. Because the 3 of the patent, Apotex '265 counter- district court by awarding erred prejudg- seeking claimed a declaration that the '265 ment interest in addition to Sanofi’s “actu- is invalid and unenforceable. Id. al specified parties’ in the settle- filing Sanofi’s forty-five the suit within agreement, ment we reverse-in-part. We days receiving of Apotex’s para- notice affirm the district holding court’s graph IV certification triggered thirty- a Apotex Inc. jointly severally and liable stay approval month of FDA for the for all and its of Apotex’s denial ANDA pursuant 21 U.S.C. motion for supplemental leave file a § 355(j)(5)(B)(iii). Id. answer, defenses, affirmative and counter- claims. 17, The stay expired May 2005, on 20, 2006, January on gave Apotex the FDA
Background approval generic final to sell product. its appeal This is the third Prior we have in Id. to the approval, par- heard FDA’s nearly this decade old ties negotiations Hatch-Waxman dis- initiated settlement pute regarding clopidogrel bisulfate tab- culminated in tentative agreement on lets, (the by sold Sanofi under the brand name March 2006 agree- March 2006 ment). Plavix®. In appeal, the first we Id. In the agreement, affirmed March 2006 the district grant granted Apotex court’s preliminary a future license un- injunction. Sanofi-Synthelabo patent, der the v. '265 Apotex, which would allow Inc., (Fed.Cir.2006) (Plavix Apotex F.3d 1368 to begin generic sale of its product I). In the appeal, second we several months patent expired. affirmed before the judgment district court’s J.A. 683. patent- expressly agreed, Sanofi also invalid, alia, in-suit is infringed, not during not inter the pendency of the unenforceable. Sanofi-Synthelabo Apo- license would not launch an authorized tex, Inc., (Fed.Cir.2008) generic. F.3d 1075 Id. (Plavix II). The facts most relevant to generic An authorized is a generic drug
this appeal are set forth as follows. sold company who markets the
On (or November drug brand name a third party licen- through agent, see). Pharm., U.S. Apotex Corp., filed See Mylan Inc. v. U.S. Food, Admin., agree- in the expressly agree Drug & Cir.2006). (4th generics, generic like launch an authorized Authorized ment price at a reduced during are sold license. generics, pendency other drug. name Under compared to the brand negotiating the settle- The BMS executive Act Hatch-Waxman provisions Sanofi, of the however, orally on behalf Apotex filed its time in effect that Sanofi would not promised Apotex ANDA, 180-day Apotex was entitled generic during this launch an authorized during which the exclusivity period 30, 2006, period. pre- BMS time On generic clo- other approve FDA would not to the sented the once products bisulfate pidogrel but failed to disclose the approval, FTC the FDA. approval from received agreement regarding oral existence of the However, 355(j)(5)(B)(iv). U.S.C. 5, 2006, On generic. an authorized June au- may still market an company branded the oral to the Apotex disclosed 180-day this exclu- generic during thorized disclosure, light FTC. Pharm., Inc., 454 sivity period. Mylan requested a written FTC certification *5 an sale of authorized at 273. The to that BMS made no BMS confirm had (through lower patients benefits generic promise to launch an authorized oral not company, but and the branded prices) pendency the of generic during by generic introduc- harms the first-to-file executive the license. The BMS submitted Id. ing generic competition. requested without disclos- certification as Compa- Bristol-Myers Squibb Although 28, 2006, ing July the On promise. oral (BMS) this it litigation, a to ny party attorneys general the informed the state Bristol-Myers plaintiff owner of is an parties they approve would not the Holding Pharmaceuticals Squibb Sanofi promised but to re- May agreement, 2006 of orders Partnership. a result entered As investigation an into the consider pending BMS, involving litigation previous in a agreement between existence of the oral subject ap- was to agreement 2006 March parties. Trade Commission by the Federal proval 2006, Apotex July On declared (FTC) attorneys state and a of consortium pursuant rights to its regulatory to denial objected multiple The FTC general. pro- agreement, May agreement, 2006 under 2006 which of the March provisions preventing including provision Regulatory Sanofi Review has not vided that “[i]f generic dur- launching 31, 2006, an authorized by July either completed been license. In view period Apotex’s of ing that there party right declare has withdrew the objections, these Sanofi ... Denial Regulatory [and] has been a resumed____” and review agreement from administrative J.A. litigations will be negotia- settlement parties reinstituted 8, 2006, Apotex launched August 693. On tions. generic product. bisulfate clopidogrel its preliminary injunction, moved for Sanofi 26, 2006, May executed
On granted August on court which the district terms settlement second —the 31, 2006, Apotex Sanofi-Synthelabo v. in ap- issue this are at partially of which (S.D.N.Y.2006), Inc., F.Supp.2d 317 (the 488 agreement). 2006 Unlike peal I.1 In Plavix and which we affirmed Sanofi did not agreement, the March 2006 arising purposes action paragraph 1. In 9 of product by Apotex generic its jurisdiction and out a sale Apotex personal consented to date of its license. prior to the effective of New York in the District venue Southern answer, gener- plemental its Apotex alleged few weeks marketed that the $884,418,724 ic it product had in net sales. patent '265 was unenforceable for misuse due to BMS’s failure to disclose the district held a The court bench trial oral agreement to the FTC and its later regarding liability January 22 between and false certification to the FTC. also February and on June added a counterclaim for breach con- an opinion holding issued the '265 tract, alleging duty that BMS its breached patent was both not invalid and not unen- regula- use reasonable efforts to secure Sanofi-Synthelabo v. Apotex forceable. tory (S.D.N.Y.2007). approval F.Supp.2d Infringement not an was issue at the trial: The court district denied mo- Apotex previously admitted that infring- tion September on 2009. J.A. 2.1-2.23. 271(e)(2) ed generic under because its claim, Regarding patent misuse product infringe would claim 3 the '265 district court determined that the claim patent. Additionally, Sanofi never amend- ‘unnecessary was “an inappropriate pleadings ed specifically allege its in- action,” 2.8, diversion’ from J.A. [the] 271(a)-(b) fringement under after Apo- “expand, complicate prolong began selling generic tex product. its discovery in prolong [the] action and court district bifurcated the issue dam- ultimate resolution.” Id. at 2.10. The dis- ages, which was scheduled for pro- future trict also determined that given our 271(e)(4)(C). pursuant ceedings Id. recent Corp. en banc decision Princo 12, 2008, On December we af- Commission, International Trade *6 the firmed district court’s in decision Pla- (Fed.Cir.2010) (en banc), F.3d 1318 BMS’s vix II. likely actions did not patent constitute mis- During the pendency liability of the trial use. Id. at 2.9. The district court similar- appeal, government and pursued the ly denied the motion to add the breach of charges against in BMS relation to its so, counterclaim. contract In doing the failure to agreement disclose the oral and district court Apotex determined that its later false certification to the FTC. On could file the breach sepa- of contract suit 30, 2007, May after the trial liability had rately and that granting motion “would ended, but before the district court en- both delay disposition litigation of this and decision, tered its pleaded guilty BMS to ... prejudice by requiring Sanofi it to making false statements to the FTC address an additional discovery.” area of § violation of 18 U.S.C. 1001. J.A. 1826- Id. at 2.11. 2009, 26, 41. On March brought FTC against BMS, a civil action resulting in a May 2006 set Sanofi’s consent judgment wherein BMS admitted “actual “50% of net it was in of obligations violation to 18, sales.” 2009, J.A. 693. On December truthfully all provisions disclose of the Sanofi for summary moved judgment on May 2006 agreed pay BMS to 9, 2010, damages. issue of On October penalty $2,100,000. a civil granted district court Sanofi’s motion 22, May summary for judgment
On and during damages Apo- ordered (50% stage $442,209,362 the litigation, Apotex tex to sought pay damages leave sales) supplemental answer, file a affirmative net and an additional defenses, and $107,930,857 counterclaims. In sup- in prejudgment interest.2 2. prejudgment The district court compounded calculated quarterly August 2006 rate, average at the prime interest annual until October 2010. J.A. 17.
1177 in a litigation judgment If the results inter awarding prejudgment 17. J.A. not the '265 invalid or est, rejected Apotex’s court the district unenforceable, agrees that its ac- arguments Sanofi infringement damages past tual Sanofi-Aventis, an such award. precluded Apotex, date on up which at The district F.Supp.2d 296-97. 50% enjoined, Apo- will be rejected Apotex’s arguments court also clopidogrel prod- sales tex’s net was not avail interest agrees .... further that it ucts Sanofi U.S.C. remedy pursuant able as a damages under 271(e)(4)(C). will seek increased fur § Id. The district court § 35 U.S.C. 284. Apotex Inc. and ther held that severally liable Corp. jointly were and added). (emphasis J.A. Apotex appeals Id. damages. at paragraph court The district held jurisdiction pursuant have and we 14(h) prejudg- did not bar award 1295(a)(1). § U.S.C. interest. 296-97. The district court F.Supp.2d at Discussion infringement for acts un- reasoned that the dis- Apotex argues that appeal, On 271(e)(2) may der 35 U.S.C. courts 1) by: granting
trict court erred monetary “damages or other relief’ award in addition to interest 271(e)(4)(C) after pursuant to 35 U.S.C. agree- in the damages specified importation has there been commercial 2) ment; awarding interest drug. Id. The dis- generic or sale 3) rate; jointly holding Apotex Inc. prime damages that such trict determined damages; severally for Sanofi’s and liable by 35 under are defined U.S.C. 4) Apotex’s motion for leave denying and are “[djamages which distinct answer, affirmative supplemental to file a recovery.” at 297. Be- categories of Id. defenses, pleading pat- and counterclaims agreement only cause the “ex- ” of contract. ent misuse breach the district court plicitly limits *7 prevent that it did not an addi- determined Prejudgment Interest of “interest on those dam- tional award grant court’s We review a district at 297. The pursuant to 284. Id. ages” of for an abuse of interest “[i]n court concluded that the ab- district v. Indus. Electro discretion. contrary, the agreement Scientific of sence Inc., 1341, 1349 Scanning 247 F.3d Gen. interest on dam- general awarding the rule (Fed.Cir.2001). “A district court abuses in actions re- ages infringement on decision is based its discretion when its mains unaltered.” Id. at 297. fact, clearly findings of is based erroneous that the district court Apotex contends law, of or the interpretations on erroneous by awarding prejudg- abused discretion unreasonable, fanci arbitrary or clearly is in the of ment interest addition to amount Techs., 138 Corp. FAS Cybor ful.” May damages” specified the “actual banc). (Fed.Cir.1998) (en 1448, 1460 Apotex argues that the agreement. 2006 a May agreement, 2006 when read as para parties dispute whether The whole, contractually lim- 14(h) that Sanofi 2006 shows May agreement of graph the recovery full to 50% of Para ited its recovery damages. of limits Sanofi’s par- when contends the Apotex denial net sales. regulatory that if graph 14 states pay- separate a interest contemplated ties parties litigation between occurs May agreement expressly 2006 ment and: will resume 1178
provided Apotex points para- terpretation agreement it. a for of settlement de which graph agreement, 10 of the defines novo. v. Spellings, Hatalmud 505 F.3d Apotex (2d Cir.2007). the amount Sanofi will reimburse 139, 145 inventory: for investment in parties appear agree The Apotex Apo- Sanofi reimburse for will governs New York law contract the inter clopidogrel tex’s of bisulfate stock bulk pretation May 2006 See goods price ... and finished for not to Appellants’ Br. 50-51 New York (citing million, Apotex which repre- exceed $40 law); 22 Appellees’ contract Br. (citing actual, fully sents and warrants is its law). New York contract Under New inventory, for loaded cost as evi- York may law a court interpret contract by denced documents will pro- as a resorting matter law without vide. sum will payable That be within extrinsic if evidence contract is days 30 Regulatory after Clearance ... straightforward unambiguous. Postle with interest the date execution McGraw-Hill, Inc., waite v. this at an annual interest (2d Cir.2005). Even where contractu 6.5%, rate compounded monthly. al ambiguous, term is if the intention of added). J.A. 691 (emphasis parties clear from four is corners argues the district court did agreement, interpretation of the abuse its discretion awarding pre- law, contract is a matter of and the court judgment interest. Sanofi contends that may appropriately summary rule on judg because the is silent regarding ment. See id. interest, the district court parties’ dispute on hinges whether correctly applied the general rule that 14(h) paragraph agree- “prejudgment ordinarily interest should be ment imposition allows of prejudg- Corp. awarded.” Gen. Motors v. Devex interest addition to “actual dam- Corp., S.Ct. U.S. ages,” or (1983). damages” whether the “actual L.Ed.2d 211 award is the full measure of Sanofi’s dam- Sanofi argues that it inconsequential ages. reviewing After expressly para- included in agreement, we conclude that graph agreement, but phrase intended that “actual not in paragraph 14. Sanofi contends that include all necessary to compen- absent language, the contractual sate Sanofi Apotex’s infringement. Be- no statutory right have to the inter- *8 cause prejudgment a interest is form of est in connection with reimbursements for compensatory damages, the district court inventory specified paragraph 10. by awarding erred additional prejudgment contrast, Sanofi contends that under 284 interest pursuant to 35 U.S.C. it statutory has a right prejudgment to interest preserve that did not to need long Courts have that pre held the agreement. settlement judgment is a compensato interest form of ry relief. “No matter of interpretation
Because the what area law of a is considered, agreement interest, settlement prejudgment is not an issue when unique law, awarded, patent to of apply part plaintiffs we the law is a of successful the appropriate regional complete compensation.” Transmatic, circuit. Novame dix, Indus., Ltd. v. NDM Acquisition Corp., Inc. v. 166 Gulton 180 F.3d 1347- (Fed.Cir.1999). F.3d (Fed.Cir.1999); 1180 The Sec see also Oiness Wal (Fed.Cir. ond Co., Circuit reviews the green district court’s in- 1996) patentee’s no puni- alty profits, interest has or the lost but also (“Prejudgment tive, only In- compensatory, purposes. prejudgment but interest. compensates patent the owner for
terest
Moreover, in
separate
section of the
of
money
of its
between the date
the use
agreement, paragraph
the parties ex-
judgment.”).
of
The
injury and the date
stated
pressly
prejudgment
that
interest
explained
policy be-
Supreme Court
the
be
and the
spe-
should
awarded
under
awarding
hind
cifically set forth how to calculate such
the
laws:
(“That
pay-
interest.
J.A. 691
sum
bewill
time that
An award of interest
the
...
able
with interest from the date of
royalty
have been
payments
the
of
execution
this
at an annual
merely
pat-
serves to make the
received
6.5%, compounded
interest rate of
month-
whole,
damages
owner
since his
con-
ent
ly.”).
We conclude
royalty
only
of the value of the
sist
whole,
agreement, taken as
indicates
forgone
but
use
payments
also
parties agreed upon
amount
when
infringe-
money
time of
between
damages” they
“actual
to
intended this
judgment.
the date
compensatory damages necessary
be
655-56,103
compensate
in-
Sanofi
461 U.S. at
Corp.,
Motors
Gen.
added).
fringement.
interpret
words “ac-
We
(emphasis
S.Ct.
damages”
tual
in this
to be the
contract
agreement supports
damages
full measure of all compensatory
damages.”
interpretation of “actual
this
interest).
(including prejudgment
damages”
“actual
but
By allowing Sanofí
Indeed,
damages un
expressly excluding
increased
construe “actual
14(ii)
Act,
already
indi not to
include
paragraph
der the Patent
inter-
to account
would lead
a result
parties
cates that the
intended
est
counter to
purpose
potential damages
general
for all
issue:
Post-
(“Contracts
lewaite,
infringement under determined that the The district court Although “court should free agreement governed the dam- ly give justice amend] leave when so [to issue, Apotex that both Inc. ages at 15(a), requires,” Sec Fed.R.Civ.P. parties to the Apotex Corp. were ond Circuit “it is within sound discre grant deny tion of court to or the district F.Supp.2d The district court also v. Mattingly, leave to amend.” Green until Apotex waited the dam- noted Cir.2009). (2d The Second trial, after the on ages phase trial Circuit reviews the denial a motion concluded, already “to liability draw dis- an amend the for abuse of dis pleadings purposes Apo- tinction for between these cretion. Id. A district court abuses its Corp., and to tex Inc. and assert ruling discretion if it an erro bases on the first time a defense to Inc.’s a clearly neous view of the law or errone at n. 2. liability damages.” Id. ous of the evidence. Id. A assessment grant district to amend agree with the district court that the court should leave We any apparent or de agreement governs liability “[i]n absence delay, clared bad ease and not address reason —such undue this need above, on dilatory part faith or motive statutory arguments. As discussed 14(ii) movant, failure cure deficien purpose paragraph repeated the clear allowed, by previously to define cies amendments May 2006 was Sanofi’s prejudice opposing party in- undue to the damages from compensatory *11 amendment, grant ent has done in a virtue of allowance of the so manner [or] futility of amendment....” See Foman v. anticompetitive that has effects.” BMS’s Davis, 178, 227, 182, 83 371 U.S. S.Ct. 9 failure to disclose the oral deal with side (1962); McCarthy L.Ed.2d see also v. Apotex, and its false certification to the 184, Corp., Dun Bradstreet 482 F.3d & same, regarding way FTC in no broad- (2d Cir.2007) (“A court district has discre grant. ened the of the scope patent '265 reason, deny good tion to leave for includ Although perhaps plausible it is faith, ing futility, delay, bad or undue un scope patent '265 could grant have to prejudice opposing party.”). due To been if broadened the FTC failed to dis- the extent district court bases the de conduct, cover nefarious such BMS’s a legal nial to a upon of leave amend inter hypothetical is irrelevant here —the FTC pretation, the Second Circuit reviews the quickly of the discovered existence oral Schulmann, novo. Spiegel denial de v. 604 agreement and BMS’s false certification (2d Cir.2010). F.3d prior to either the FTC or state attor- neys general giving approval to the Apotex argues district agreement. by denying court abused its discretion Apotex’s leave to add an amend to affirma Apotex contends that our decision patent
tive defense of misuse and coun Qualcomm Corp., terclaim for breach of contract. Inc. v. We dis Broadcom agree. (Fed.Cir.2008), 1021-22 n. 8 supports argument patent may its that a
Apotex’s allegations regarding patent be held unenforceable for the failure to entirely misuse arise from BMS’s conduct comply statutory with a obligation to dis surrounding its failure to disclose the exis- close relating patent information li to tence of the oral regarding an Qual cense and settlement generic authorized to the FTC and the not, however, comm is regarding case attorneys consortium of general. state patent misuse, but instead concerns wheth contends under both Federal patentee er a waived rights law its prior judgments, and the FTC’s enforce BMS duty patents had a to inform its to its the FTC its oral due failure disclose promise not to gener- launch an authorized their existence to a standard-setting or argues ic. Apotex that BMS’s Qualcomm, failure to ganization. Id. at 1008. oral agreement, despite disclose the this therefore, provides no basis for distin disclose, duty affirmative rises to the guishing later our en banc decision in patent level of misuse that rendered the Brinco, expressly Brinco. As we held '265 patent during unenforceable the en- patent “the defense of misuse is not avail tire period Apotex generic product. sold its presumptive able to a infringer simply be patentee engages cause a in some kind of
The district
properly rejected
wrongful
conduct,
commercial
even con
Apotex’s patent misuse defense as futile.
may
duct
anticompetitive
have
ef
See Acito
IMCERA Grp.,
(2d Cir.1995) (“One
reprehensi
fects.”
tex’s Conclusion fail- agreement by breached reverse the forgoing For the reasons we the oral side ing to disclose grant prejudgment in- contends district court’s Apotex Specifically, the FTC. terest, holding affirm its that the oral we to disclose that BMS’s failure severally liable for all jointly of the Inc. is paragraph 18 agreement breached damages, Apotex’s that and affirm its denial requirement agreement’s an- supplemental to motion for leave to file efforts” “use reasonable both defenses, swer, affirmative and counter- The district court approval. FTC obtain claims. to add the counter- motion denied both de-
claim, determining that “it would REVERSED-IN-PART, AFFIRMED- ... litigation of this lay disposition IN-PART by requiring it to address prejudice discovery.” J.A. 2.11.
an
area of
additional
Costs
court
the district
Apotex contends
No Costs.
judge
discretion because
abused its
discovery into the
reopened
have
NEWMAN,
could
in
Judge, dissenting
Circuit
that seven-
*13
See,
Ecolab,
Corp.,
Inc. v. FMC
569
e.g.,
awarding
damages
rule
interest on
in pat
(Fed.Cir.2009) (“When
1335,
F.3d
1353
ent
infringement actions remains unal
patentee
patent
asserts a
claim that is held
tered.”
F.Supp.2d
748
at
infringed, prejudgment
to be valid and
in-
284;
Motors,
(citing
§
297
35 U.S.C.
Gen.
awarded.”);
generally
Crystal
terest
is
2058).
657, 103
461 U.S. at
S.Ct.
Corp.
Semiconductor
v. TriTech Micro-
panel majority
proposes that
the
Int’l,
(Fed.
1336,
246 F.3d
electronics
1346
prejudgment
contract’s silence on
interest
Cir.2001) (“the discretion of the district
parties
means
that
intended and
denying prejudgment
court in
interest
is
agreed,
silence,
by
forgo
their
in-
such
circumstances”);
specific
limited to
Lum-
terest. But
as
Court confirmed in
Indus., Inc. v. D.M.
E. Corp.,
mus
&
862
Motors,
background
General
rule is
(“It
(Fed.Cir.1988)
267,
F.2d
275
is clear
interest
is awarded on
withholding
from General Motors that the
damages
for
infringement, as re-
delay
interest based on
is
quired by statute.
6See Corbin on Con-
”);
exception,
Gyro-
not the rule....
(“The
tracts
26.1
critical concept is that
Co.,
Corp.
Champion Spark Plug
mat
v.
parties apply
background
if
rule
their
(Fed.Cir.1984)
549,
(“the
735 F.2d
555
Assuming
contract is silent.
that the rule
repeated
Court’s
statements that prejudg-
defeasible,
may
is
and
be changed
ment interest
ordinarily
‘should
be award-
agreement,
parties
have the choice of
ed’ indicates that
is the governing
saying
it,
nothing
keeping
and
or affirma-
enunciated”);
principle the Court
Paper
it.”).
tively modifying
displacing
or
Converting Mach. Co. v. Magnar-Graphics
(Fed.Cir.1984)
Corp.,
11,
745 F.2d
23
If the parties had intended to prevent
(“Prejudgment
ordinarily
interest should
the award of
they
interest
would have
justification
be awarded absent some
explicitly,
done so
for the award of interest
award,
withholding such an
v.
Leinoff
rule,
is the statutory
exception.
Sons, Inc.,
734,
Louis Milona &
Motors,
Gen.
of interest on those does majority’s theory,
support panel inventory interest on sale of rule, prejudg-
is not the established on infringement damages. correctly district ruled “the
fact that parties agreed on an interest (see obligation
rate for one Settlement ¶ 10),
Agreement damages, but not for statutory right
does not vitiate Sanofi’s
pursuant to section 284 to
interest.” F.Supp.2d
at 297.
My colleagues reading err in con-
tract’s silence on interest infringement meaning that the intended and
agreed forgo the interest to which the
patentee prece- is entitled statute and must,
dent. I respectfully, dissent.
STRECK, INC., Plaintiff-Appellee, &
RESEARCH DIAGNOSTIC
SYSTEMS, INC., Defendant-
Appellant.
No. 2011-1045.
United States Appeals, Court of
Federal Circuit.
Oct.
claim.
notes
contract
part.
Apo-
the time
passed
teen months
between
I
I
respectfully dissent from Part
of the
to amend and
tex moved
leave
opinion,
court’s
which reverses
district
summary judgment
granted
court
district
prejudgment
court’s award of
interest on
damages.
on the issue of
agreed
damages.
conditional
The
Agreement
general
did not alter the
may deny a motion to
A court
rule that
interest is awarded
“significantly delay
amend where it would
patent infringement.
damages
on
Block v.
dispute.”
the resolution of the
depend
not
on
general rule does
whether
(2d
Assocs.,
First Blood
damages
are measured
the amount of
Cir.1993).
court denied
the district
When
profits,
royalty
infringing
lost
or as a
on
motion,
litigation
spanned
had
sales, or,
here,
agreed percentage
an
fact,
full trial and
nearly eight years.
Thus,
injured party
sales.
to make
liability for the
on the issue of
appeal
whole,
monetary
on the
paid
already occurred. See
patent claims had
correctly
recog-
so
loss. The district
Realty
Corp.,
Xerox
Co. v.
Gussack
court, applying
nized. The district
Su-
Cir.2000)
(2d
(“Generally, in
preme
prece-
Court and Federal Circuit
liability on the
troducing new claims for
dent,
not
to have erred.
has
been shown
defen
day
prejudice
last
of trial will
dant.”). Therefore,
Motors
say
explained
cannot
that the
The Court
General
we
648, 654,
Corp.,
461 U.S.
Corp.
its discretion when
Devex
district court abused
(1983),
2058,