Fresh From the Bench: Latest Federal Circuit Court Cases
CASES OF THE WEEK
University of Strathclyde v. Clear-Vu Lighting LLC, Appeal No. 2021-2243 (Fed. Cir. Nov. 4, 2021)
In this week’s Case of the Week, the Federal Circuit reversed an inter partes review decision finding claims directed to light-based disinfecting methods to be obvious over the prior art. This case provides a helpful example of how negative claim limitations can affect an obviousness determination.
The claims at issue were directed to the use of blue light with wavelengths in the range of 400-420 nm to inactivate certain types of bacteria with cell wall characteristics that make them resistant to antibiotics, such as Methicillin-resistant Staphylococcus aureus (“MRSA”). As relevant to the appeal, the challenged claims each affirmatively required that such bacteria be inactivated without the use of a photosensitizer, or a chemical agent applied to the bacteria to facilitate photoinactivation.
In a case involving an ANDA application to sell generic pharmaceuticals, the Court affirmed a dismissal on grounds of improper venue. Celgene brought suit against Mylan in New Jersey. But the Court held that Mylan did not commit any acts of infringement in New Jersey. Rather, infringement in this case was the submission of the ANDA, which did not take place in New Jersey. Additionally, in what appears to be a matter of first impression, the Court affirmed that the sending of the paragraph IV notice letter to Celgene in New Jersey was not an act of infringement sufficient to trigger venue in New Jersey. The Court also found that Mylan did not have a regular and established place of business in New Jersey – only a few employees lived in New Jersey, and none were asked by Mylan to live there, and affiliates residing in New Jersey could not be imputed to the parent company for venue purposes.
The Court also affirmed dismissal as to Mylan N.V. because the pleadings made only conclusory allegations that Mylan N.V. “submitted” the ANDA, even though it was submitted on its face by its U.S.-based subsidiaries. The Court also affirmed that the district court did not abuse its discretion in denying leave to amend its complaint.