Warner Chilcott Company v. Lupin Ltd. ( 2014 )

Case: 14-1582 Document: 33 Page: 1 Filed: 10/06/2014
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
WARNER CHILCOTT COMPANY, LLC,
Plaintiff-Appellant,
v.
LUPIN LTD. AND LUPIN PHARMACEUTICALS,
INC.,
Defendants-Appellees.
______________________
2014-1582
______________________
Appeal from the United States District Court for the
District of New Jersey in No. 3:11-cv-07228-JAP-DEA,
Judge Joel A. Pisano.
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WARNER CHILCOTT COMPANY, LLC,
Plaintiff-Appellee,
v.
LUPIN LTD. AND LUPIN PHARMACEUTICALS,
INC.,
Defendants-Appellants.
______________________
2014-1632
Case: 14-1582 Document: 33 Page: 2 Filed: 10/06/2014
2 WARNER CHILCOTT COMPANY v. LUPIN LTD.
______________________
Appeal from the United States District Court for the
District of New Jersey in No. 3:11-cv-07228-JAP-DEA,
Judge Joel A. Pisano.
______________________
ON MOTION
______________________
Before PROST, Chief Judge, DYK and MOORE, Circuit
Judges.
PROST, Chief Judge.
ORDER
Warner Chilcott Company, LLC moves to dismiss the
cross-appeal of Lupin Ltd. and Lupin Pharmaceuticals,
Inc. (collectively, “Lupin”). Lupin opposes.
I.
This case involves a dispute over whether Lupin’s Ab-
breviated New Drug Application to market its generic
version of Generess® infringes U.S. Patent No. 6,667,050(the “’050 patent”) owned by Warner Chilcott and listed in
the Orange Book.
Following a bench trial, the district court entered its
judgment, which, provided in relevant part:
IT IS on this 28th day of April 2014
ORDERED as follows:
1. Judgment is entered in favor of Plaintiff
on Plaintiff’s claims of infringement and De-
fendants’ counterclaim of noninfringement.
2. The Court finding that the ’050 patent is
invalid as obvious, and judgment is entered
Case: 14-1582 Document: 33 Page: 3 Filed: 10/06/2014
WARNER CHILCOTT COMPANY v. LUPIN LTD. 3
in favor of Defendants on Defendants’ coun-
terclaim of invalidity.
After Warner Chilcott appealed from the judgment,
Lupin filed a cross-appeal, challenging the district court’s
infringement and definiteness determinations. Warner
Chilcott moves to dismiss the cross-appeal as improper.
II.
When a district court has entered a judgment of inva-
lidity as to all asserted claims, a cross-appeal is unneces-
sary and improper to assert additional grounds of
invalidity or non-infringement. See, e.g., Aventis Pharma
S.A. v. Hospira, Inc., 637 F.3d 1341, 1343-44 (Fed. Cir.
2011); TypeRight Keyboard Corp. v. Microsoft Corp., 374
F.3d 1151, 1157 (Fed. Cir. 2004). Lupin nonetheless
contends that its cross-appeal was proper because the
district court “entered two distinct judgments—one as to
infringement and one as to invalidity.”
That the district court entered a judgment with sepa-
rate line items addressing infringement and invalidity
does not suggest Lupin’s cross-appeal was proper. The
form of the judgment is not what matters; what matters is
whether the party was adversely affected by the judg-
ment. See TypeRight, 374 F.3d at 1156-57 (“A party may
‘cross-appeal if adversely affected by the appealed judg-
ment in some particular which it seeks to have modi-
fied.’”) (quoting Beloit Corp. v. Valmet Oy, 742 F.2d 1421,
1424 (Fed. Cir. 1984)).
Radio Steel & Mfg. Co. v. MTD Products, Inc., 731
F.2d 840 (Fed. Cir. 1984), upon which Lupin most heavily
relies, is easily distinguishable. There, the district court
issued a judgment that the patent was “valid but not
infringed by the defendant’s products.” Id. at 843. Since
the defendant would need to modify the judgment to
market other products without fear of infringing the
patent, we concluded that a cross-appeal would be neces-
Case: 14-1582 Document: 33 Page: 4 Filed: 10/06/2014
4 WARNER CHILCOTT COMPANY v. LUPIN LTD.
sary. Id. at 844. Here, by contrast, Lupin is not adverse-
ly affected because it cannot be liable for infringement of
an invalid patent. See, e.g., Richdel, Inc. v. Sunspool
Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983). Thus, unlike
Radio Steel & Mfg. Co., this case does not involve circum-
stances where the defendant is seeking to expand its
rights under the judgment, and therefore is outside the
circumstances where filing a cross-appeal is proper.
However, the “appellee may, without taking a cross-
appeal, urge in support of a decree any matter appearing
in the record, although his argument may involve an
attack upon the reasoning of the lower [tribunal] or an
insistence upon matter overlooked or ignored by it.”
United States v. Am. Ry. Express Co., 265 U.S. 425, 435
(1924). Lupin may thus make its arguments regarding
non-infringement and indefiniteness in its response brief
as an appellee. See, e.g., Datascope Corp. v. SMEC, Inc.,
879 F.2d 820, 822 n.1 (Fed. Cir. 1989) (an appellee may
assert alternative grounds for affirmance supported by
the record).
Accordingly,
IT IS ORDERED THAT:
(1) The motion is granted. 2014-1632 is dismissed.
(2) The revised official caption in 2014-1582 is reflect-
ed above.
(3) Each side shall bear its own costs in 2014-1632.
(4) Lupin’s response brief is due no later than Novem-
ber 6, 2014.
FOR THE COURT
/s/ Daniel E. O’Toole
Daniel E. O’Toole
Clerk of Court
Case: 14-1582 Document: 33 Page: 5 Filed: 10/06/2014
WARNER CHILCOTT COMPANY v. LUPIN LTD. 5
ISSUED AS A MANDATE (As To 14-1632 Only):
October 6, 2014
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