Shire, LLC v. Sandoz, Inc.

NOTE: This order is nonprecedential.
United States Court of Appeals for the Federal Circuit
Miscellaneous Docket No. 893
SHIRE LLC,
Plaintiff-Respondent,
v.
SANDOZ, INC.,
Defendant-Petitioner.
On Petition for Permission to Appeal pursuant to 28 U.S.C. § 1292(b)
from the United States District Court for the District of Colorado in case no. 07-CV-
00197, Judge Philip A. Brimmer.
ON PETITION FOR PERMISSION TO APPEAL
Before GAJARSA, LINN, and PROST, Circuit Judges.
PROST, Circuit Judge.
ORDER
Sandoz, Inc. petitions for permission to appeal an order certified by the United
States District Court for the District of Colorado as one involving a controlling issue of
law as to which there is substantial ground for difference of opinion and for which an
immediate appeal may materially advance the ultimate termination of the litigation.
Shire LLC opposes.
Sandoz petitions for this court to hear the issue of whether a patentee who
settles an earlier infringement case after a Markman ruling has issued is precluded
under the doctrine of collateral estoppel from relitigating claim-construction issues
determined in the prior case. In its summary judgment order, the district court
acknowledged two previous holdings from different district courts addressing the
patents-in-suit, taking opposite positions regarding issues affecting the claim
construction in this case. The court here refused to give preclusive effect to the first
district court’s claim construction but granted Sandoz’s motion to certify on the ground
that the issue could be dispositive as to the infringement of at least one of the patents in
this case.
Ultimately, this court must exercise its own discretion in deciding whether it will
grant permission to appeal interlocutory orders certified by a trial court. See In re
Convertible Rowing Exerciser Patent Litigation, 903 F.2d 822 (Fed. Cir. 1990); 28
U.S.C. § 1292(c)(1). We determine that granting the petition in these circumstances is
warranted.
Accordingly,
IT IS ORDERED THAT:
The petition for permission to appeal is granted.
FOR THE COURT
Feb. 6, 2009 /s/ Jan Horbaly____________
Date Jan Horbaly
Clerk
cc: Keith D. Parr, Esq.
Edgar H. Haug, Esq.
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Misc. 893 -2-