Allergan, Inc. v. Sandoz Inc.

NOTE: This order is n0nprecedential. United States Court of AppeaIs for the Federal Circuit ALLERGAN, INC., Plair,tiff-Appellee, V. SANDOZ INC., ALCON LABORATORIES, INC., ALCON RESEARCH LTD., ALCON, INC., AND._ FALCON PHARMACEUTICALS, LTD., Defendants-Appellants, AN1)d _ APOTEX INC. AND APOTEX CORP., Defendants-Appellan,ts, AND WATSON LABORATORIES, INC., Defendant-Appellan,t. 2011-1619, -1620, -1635, -1639 Appea1s from the United States District C0urt for the Eastern District of Texas in consolidated case N0. 09-CV- 0097, Judge T. J0hn Ward. ALLERGAN V. SANDOZ 2 ALLERGAN INC., Plaintiff-Appellant, V. SANDOZ INC., ALCON LABORATORIES, INC., ALCON RESEARCH LTD., ALCON, INC., AND FALCON PHARMACEUTICALS, LTD., Defen.dants-Appellees, AND » APOTEX INC. AND APOTEX CORP., Defen,dants-Appellees, AND WATSON LABORATORIES, INC., Defendant-Appellee. 2012-1005, -1013 Appea1s from the United States District Court for the Eastern Dist1'ict of 'I`exas in consolidated case No. 09-CV- 0097, Judge T. J0hn Ward. ON MOTION Before BRYs0N, MAYER, and L1NN, Circuit Judge. BRYs0N, Circuit Judge. 0 R D E R Sandoz Inc., A1con Laborat0ries, Inc., A1c0n Research Ltd., A1c0n, Inc., and Fa1con Pharmaceutica1s, Ltd. (c01- 3 ALLERGAN V. SANDOZ lectively, SandoZ) move to dismiss Allergan, lnc.’s cross- appeal. Allergan opposes. Sandoz replies. Al1ergan brought this suit under the Hatch-Waxman Act. Allergan’s complaint charged Sandoz and the other defendants with infringement of U.S. Patent Nos. 7,030,149, 7,320,976, 7,323,463, and 7,642,258. The complaint sought to enjoin the defendants from marking a generic version of Allergan’s Combigan® product. The district court granted summary judgment of non- infringement as to claims 1-3 of the '149 patent, but found that Sandoz’s generic product infringed claim 4 of the '149 patent and infringed asserted claims of the other patents. The district court also found that the claims held to be infringed were valid According to Allergan, however, the district court did not address validity issues relating to claims 1-3 of the ’149 patent in light of the court’s non- infringement determination. As a result, the court en- joined Sandoz from marking its generic version of the Combigan® product. Sandoz has appealed from the final judgment of in- fringement and validity, and A11ergan filed cross-appeals relating to the summary judgment of non-infringement as to claims 1-3 of the ’149 patent. “A party may cross- appeal if adversely affected by the appealed judgment in some particular which it seeks to have modified." TypeRight Keyb0ard Corp. u. Micr0soft Corp., 374 F.3d 1151, 1156 (Fed. Cir. 2004). A cross appeal may only be filed "when a party seeks to enlarge its own rights under the judgment or to lessen the rights of its adversary under the judgment." Bailey v. Dart Container Group Corp., 292 F.3d 1360, 1362 (Fed. Cir. 2002). The court agrees that a cross-appeal would be im- proper under these circumstances Because the district court enjoined Sandoz from marketing a generic version of ALLERGAN V. SANDOZ 4 the Combigan® product based on the infringement of claim 4 of the ’149 patent, a cross-appeal from the non- infringement determinations as to claims 1-3 of the same patent could not result in the enlargement of A_llergan’s rights under the judgment. As long as Sandoz is found to infringe at least one claim of the ‘149 patent, the judg- ment--the injunction against marketing a generic version of Combigan_will remain the same. Allergan is of course free to raise arguments regard- ing claim construction and non-infringement as to claims 1-3 of the ’149 patent in its response brief To the extent that Allergan wishes to argue that the district court erred in not addressing validity issues as to claims 1-3 of the '149 patent, those arguments too can be raised in the response brief. However, since there is currently no adverse judgment on validity of those claims to Allergan, a cross-appeal would be improper. ` Accordingly, I'r ls OR:oERED THAT: (1) The motion to dismiss the cross-appeal is granted. Appeal nos. 2012-1005 and 2012-1013 are dismissed (2) Each side shall bear its own costs in 2012-1005 and 2012-1013. (3) The revised official caption is reflected above FOR THE CoURT APR 04 2012 /s/ J an Horbaly Date J an Horbaly Clerk FlLED u.s. count ol= APPEALs ms THE FEDEHAL C1RCUlT APR 04 2012 AN HORBA\.Y ll CLEB\( 5 ALLERGAN V. SANDOZ cc: Deanne E. Maynard, Esq. Jonathan E. Singer, Esq. Robert B. Breisblatt, Esq. Gary Edward Hood, Esq. s24 IsSued AS A Mandare eis co 2012-1oo5, -1013 0n1y); ApR 94 2913