Novo Nordisk Inc. v. Paddock Laboratories, Inc. , 515 F. App'x 889 ( 2013 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
NOVO NORDISK INC. AND
NOVO NORDISK A/S,
Plaintiffs-Appellants,
v.
PADDOCK LABORATORIES, INC.,
Defendant-Appellee.
______________________
2012-1031
______________________
Appeal from the United States District Court for the
District of Minnesota in No. 10-CV-2199, Judge Donovan
W. Frank.
______________________
Decided: June 18, 2013
______________________
MARK A. PERRY, Gibson, Dunn & Crutcher LLP, of
Washington DC, argued for plaintiffs-appellants. With
him on the brief were JOSH A. KREVITT, WAYNE BARSKY,
and MICHAEL A. SITZMAN. Of counsel was LUCAS C.
TOWNSEND.
DANIEL G. BROWN, Latham & Watkins LLP, of New
York, New York, argued for defendant-appellee. With
2 NOVO NORDISK A/S v. PADDOCK LABORATORIES, INC.
him on the brief were GINA R. GENCARELLI and WILLIAM
J. KATT. Of counsel was JEFFREY A. HOVDEN.
______________________
Before NEWMAN, DYK, and PROST, Circuit Judges.
PROST, Circuit Judge.
Novo Nordisk, Inc. and Novo Nordisk A/S (“Novo”)
appeal from a judgment by the United States District
Court for the District of Minnesota that claim 4 of its U.S.
Patent No. 6,677,358 (“’358 patent”) is invalid as obvious
and that the ’358 patent is unenforceable due to inequita-
ble conduct. Novo Nordisk, Inc. v. Paddock Labs., Inc.,
797 F. Supp. 2d 926, 935 (D. Minn. 2011) (“No-
vo/Paddock”).
This case is a companion case to Novo Nordisk A/S v.
Caraco Pharmaceutical Laboratories, Ltd., No. 2011-1223
(Fed. Cir. June 18, 2013) (“Novo/Caraco”), decided con-
temporaneously herewith. That case involved a decision
by the United States District Court for the Eastern Dis-
trict of Michigan, which ruled that claim 4 of the ’358
patent was invalid as obvious and that the patent was
unenforceable due to inequitable conduct. See id., slip op.
at 7-8. Today, we have affirmed the Michigan court’s
obviousness decision but reversed its inequitable conduct
decision. Id., slip op. at 24.
The Minnesota court deciding the present case grant-
ed judgment on the pleadings in favor Paddock Laborato-
ries, Inc. (“Paddock”), based upon the collateral estoppel
effect of the Michigan court’s decision. Novo/Paddock,
797 F. Supp. 2d at 935. Because we have reversed the
inequitable conduct portion of the Michigan court’s deci-
sion, we likewise reverse the Minnesota court’s judgment
regarding Paddock’s inequitable conduct defense.
Regarding invalidity, Novo asserts that reversal is
warranted (notwithstanding the merits of the Michigan
NOVO NORDISK A/S v. PADDOCK LABORATORIES, INC. 3
court’s decision) because the Eighth Circuit recognizes an
exception to the collateral estoppel doctrine when the law
controlling the issue is substantively changed following
the original determination. See Ginters v. Frazier, 614
F.3d 822, 827 (8th Cir. 2010) (recognizing that the Eighth
Circuit embraces the “change in the law” exception to
collateral estoppel). Novo contends that this exception
applies here because, according to Novo, the law of obvi-
ousness was substantively changed by our holding in In re
Cyclobenzaprine Hydrochloride Extended-Release Capsule
Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012).
As we explained in Novo/Caraco, the Cyclobenzaprine
decision did not change the law of obviousness but instead
simply “reaffirmed our longstanding precedent that it is
error to find a claim obvious ‘before . . . consider[ing] the
objective considerations,’ or to shift the burden of persua-
sion to the patentee at any point during its obviousness
analysis.” Novo/Caraco, slip op. at 10-11 (quoting In re
Cyclobenzaprine, 676 F.3d 1063 at 1075). And in any
event, Cyclobenzaprine was a panel decision and so it
could not have overruled prior obviousness law absent en
banc or Supreme Court consideration. Newell Co. v.
Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988).
Therefore, the “change in law” exception does not apply
and we affirm the Minnesota court’s judgment that claim
4 of the ’358 patent was invalid as obvious based upon the
collateral estoppel effect of the Michigan court’s decision.
For the reasons set forth above, we affirm the Minne-
sota court’s judgment that claim 4 of the ’358 patent was
invalid as obvious, but reverse its judgment that the ’358
patent was unenforceable due to inequitable conduct. To
the extent that any dispute remains concerning Paddock’s
alleged infringement of claims 1, 2, 3, and 5 of the ’358
patent, we remand for further consideration consistent
with this decision.
4 NOVO NORDISK A/S v. PADDOCK LABORATORIES, INC.
AFFIRMED IN PART, REVERSED IN PART, AND
REMANDED IN PART