NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ALLERGAN, INC.,
Plaintiff-Appellant
DUKE UNIVERSITY,
Plaintiff
v.
SANDOZ, INC., AKORN, INC., HI-TECH
PHARMACAL CO., INC., APOTEX, INC., APOTEX
CORP.,
Defendants-Appellees
______________________
2016-1085, 2016-1160
______________________
Appeals from the United States District Court for the
Middle District of North Carolina in Nos. 1:14-cv-01028-
CCE-LPA, 1:14-cv-01034-CCE-LPA, Judge Catherine C.
Eagles.
______________________
Decided: March 17, 2017
______________________
CRAIG E. COUNTRYMAN, Fish & Richardson P.C., San
Diego, CA, argued for plaintiff-appellant. Also represent-
ed by JONATHAN ELLIOT SINGER; ELIZABETH M. FLANAGAN,
2 ALLERGAN, INC. v. SANDOZ, INC.
Wilmington, DE; DEANNA JEAN REICHEL, Minneapolis,
MN.
JOHN J. MOLENDA, Steptoe & Johnson, LLP, New
York, NY, argued for all defendants-appellees. Defend-
ant-appellee Sandoz, Inc. also represented by THOMAS J.
FILARSKI, Chicago, IL; GRETCHEN P. MILLER, Washington,
DC.
SAILESH K. PATEL, Schiff Hardin LLP, Chicago, IL, for
defendants-appellees Akorn, Inc., Hi-Tech Pharmacal Co.,
Inc. Also represented by JOEL M. WALLACE.
DEANNE M. MAZZOCHI, Rakoczy Molino Mazzochi
Siwik LLP, Chicago, IL, for defendants-appellees Apotex,
Inc., Apotex Corp. Also represented by JOSEPH T. JAROS,
WILLIAM A. RAKOCZY, LUKE TIMOTHY SHANNON.
______________________
Before REYNA, WALLACH, and CHEN, Circuit Judges.
WALLACH, Circuit Judge.
Appellant Allergan, Inc. (“Allergan”) appeals the final
decision of the U.S. District Court for the Middle District
of North Carolina (“District Court”) dismissing its patent
infringement case against Sandoz, Inc. et al. (“Sandoz”)
with prejudice based on collateral estoppel and declaring
several claims of Allergan’s patent invalid as obvious. We
affirm-in-part and reverse-in-part.
BACKGROUND
This case comes to our court with a lengthy procedur-
al history involving both parties and six related patents:
U.S. Patent Nos. 7,388,029 (“the ’029 patent”), 7,351,404
(“the ’404 patent”), 8,263,054 (“the ’054 patent”),
8,038,988 (“the ’988 patent”), 8,101,161 (“the ’161 pa-
ALLERGAN, INC. v. SANDOZ, INC. 3
tent”), and 8,926,953 (“the ’953 patent”). 1 All of the
patents generally recite a topical solution to treat hair
loss or reduction with the compound bimatoprost, a
molecular substance that can affect cell growth and
functionality. See ’029 patent, Abstract; ’404 patent,
Abstract; ’054 patent, Abstract; ’988 patent, Abstract; ’161
patent, Abstract; ’953 patent, Abstract. Allergan sued
Sandoz for infringement of, inter alia, the ’029 patent and
the ’404 patent, and Sandoz countersued, arguing that the
patents were invalid for various reasons. See Allergan,
Inc. v. Apotex, Inc. (Allergan I), Nos. 1:10-cv-681, 1:11-cv-
298, 1:11-cv-650, 2013 WL 286251, at *1 (M.D.N.C. Jan.
24, 2013); J.A. 2988, 3998 (complaints against Apotex and
Sandoz). The District Court found in favor of Allergan.
Allergan I, 2013 WL 286251, at *13. Sandoz appealed,
and we reversed the District Court’s invalidity findings
based on obviousness for the ’404 and ’029 patents and
vacated the District Court’s injunction. See Allergan, Inc.
v. Apotex, Inc. (Allergan II), 754 F.3d 952, 970 & n.13
(Fed. Cir. 2014).
While Allergan I was pending, Allergan filed a second
suit alleging that Sandoz infringed the ’054 patent, the
’988 patent, and the ’161 patent. See J.A. 223, 236. The
case was stayed pending the appeal and resolution of
1 The ’029, ’054, ’988, ’161, and ’953 patents are
continuations of the ’404 patent. A continuation patent
application is “an application filed subsequently to anoth-
er application, while the prior application is pending,
disclosing all or a substantial part of the subject matter of
the prior application and containing claims to subject-
matter common to both applications, both applications
being filed by the same inventor or his legal representa-
tive.” U.S. Water Servs., Inc. v. Novozymes A/S, 843 F.3d
1345, 1348 n.1 (Fed. Cir. 2016) (internal quotation marks
and citation omitted).
4 ALLERGAN, INC. v. SANDOZ, INC.
Allergan I. J.A. 3919−20. Following Allergan II, Apotex,
Inc. (“Apotex”), the primary named defendant in the
second suit, filed a motion for judgment on the pleadings
pursuant to Federal Rule of Civil Procedure 12(c), which
the District Court granted. Allergan, Inc. v. Apotex, Inc.
(Allergan III), Nos. 1:12-cv-247, 1:13-cv-16 (M.D.N.C. Jan.
14, 2015) (J.A. 2984−86). Allergan then moved to volun-
tarily dismiss its claims against the other defendants
pursuant to Federal Rule of Civil Procedure 41(a)(2),
which the District Court granted. J.A. 2987.
During the pendency of the two suits, Allergan’s ap-
plication for the ’953 patent was pending before an exam-
iner at the U.S. Patent and Trademark Office (“USPTO”).
While the application for the ’953 patent was pending and
after the ’404 patent had been invalidated as obvious by
this court in Allergan II, Allergan submitted ex parte
declarations to the Examiner related to two prior art
references used to invalidate the ’404 patent. J.A.
1965−66; see J.A. 1967–76 (ex parte declarations). The
testimony was intended to show that one of the inventors
of both the ’404 patent and the then-pending application
for the ’953 patent, Dr. Amanda VanDenburgh, was an
author of the prior art references, such that the references
were no longer prior art under 35 U.S.C. § 102(a) (2012). 2
2 Section 102(a) states, in relevant part: “A person
shall be entitled to a patent unless―the claimed invention
was patented, described in a printed publication, or in
public use, on sale, or otherwise available to the public
before the effective filing date of the claimed invention.”
35 U.S.C. § 102(a)(1). This has been interpreted by our
predecessor court to mean that “one’s own work is not
prior art under § 102(a) even though it has been disclosed
to the public in a manner or form which otherwise would
fall under § 102(a).” In re Katz, 687 F.2d 450, 454 (CCPA
1982). Congress amended § 102(a) when it passed the
ALLERGAN, INC. v. SANDOZ, INC. 5
J.A. 1965−76. The USPTO issued the ’953 patent and
Allergan filed two complaints asserting claims 1–26 of the
’953 patent against Sandoz. J.A. 363−80 (First Amended
Complaint against Apotex), 1500−52 (First Amended
Complaint against remaining defendants). 3 These com-
plaints form the basis for this appeal. However, Allergan
was given leave to file second amended complaints, which
reduced the disputed claims to claims 8, 23, and 26 of the
’953 patent (“the Asserted Claims”). See J.A. 944−56
(Second Amended Complaint against Apotex), 1875−98
(Second Amended Complaint against remaining defend-
ants).
Sandoz filed a motion to dismiss the subject suit pur-
suant to Federal Rule of Civil Procedure 12(b)(6) for
failure to state a claim upon which relief could be granted
based on collateral estoppel, J.A. 957–62, 1918–21, which
the District Court granted, Allergan, Inc. v. Sandoz, Inc.
(Allergan IV), Nos. 1:14-cv-1028, 1:14-cv-1034 (M.D.N.C.
Aug. 31, 2015) (J.A. 1–13). The District Court stated that
“[t]he ’953 patent at issue in this case
claims . . . substantially the same subject matter as[]
invalid ’404 patent claim 14 and the relevant claims of the
Leahy-Smith America Invents Act (“AIA”). Pub. L. No.
112-29, § 3(b)(1), 125 Stat. 284, 285 (2011). Because the
application that led to the ’953 patent contained claims
having an effective filing date on or after March 16, 2013
(the effective date of the statutory changes enacted in
2011), the AIA’s § 102(a) would apply to a substantive
review of the ’953 patent. See id. § 3(n)(1), 125 Stat. at
293. This court has not determined whether the Katz
standard applies to reviews of prior art under the AIA’s
§ 102, nor does either party ask us to do so here. See
generally Appellant’s Br.; Appellee’s Br.
3 The original complaints did not assert the ’953 pa-
tent. See J.A. 300−62, 3650−732.
6 ALLERGAN, INC. v. SANDOZ, INC.
’054, ’161, and ’988 patents.” J.A. 5. The District Court
did not consider the ex parte testimony that Allergan
submitted to the Examiner during the ’953 patent prose-
cution. See J.A. 1−13. The District Court entered judg-
ment for Sandoz, holding that “[t]he ’953 patent is hereby
declared and adjudged invalid as obvious . . . .” J.A. 9. 4
Allergan appealed. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1) (2012).
DISCUSSION
I. Choice of Law and Standard of Review
Because the criteria of collateral estoppel are not
unique to patent issues, “[w]e apply the law of the region-
al circuit to the general procedural question of whether
issue preclusion applies,” here, the Fourth Circuit.
Soverain Software LLC v. Victoria’s Secret Direct Brand
Mgmt., LLC, 778 F.3d 1311, 1314 (Fed. Cir. 2015) (cita-
tion omitted). The Fourth Circuit reviews de novo the
application of collateral estoppel. See Tuttle v. Arlington
Cty. Sch. Bd., 195 F.3d 698, 703 (4th Cir. 1999). “Howev-
er, for any aspects that may have special or unique appli-
cation to patent cases, Federal Circuit precedent is
applicable.” Aspex Eyewear, Inc. v. Zenni Optical Inc., 713
F.3d 1377, 1380 (Fed. Cir. 2013). For example, “the
question whether a particular claim in a patent case is
the same as or separate from another claim has special
application to patent cases, and we therefore apply our
own law to that issue.” Id. (internal quotation marks and
citation omitted).
4 Separate amended final judgments were issued
for all appellees except Sandoz, Inc. declaring that only
the Asserted Claims of the ’953 patent were invalid as
obvious. J.A. 7, 12−13 (Final Judgments); see J.A. 195
(describing the initial judgment), 204−05 (describing
amended judgments).
ALLERGAN, INC. v. SANDOZ, INC. 7
II. The District Court Properly Dismissed the Case Based
on Collateral Estoppel
A. Legal Standards
The doctrine of “[c]ollateral estoppel forecloses the re-
litigation of issues of fact or law that are identical to
issues which have been actually determined and neces-
sarily decided in prior litigation in which the party
against whom issue preclusion is asserted had a full and
fair opportunity to litigate.” Sedlack v. Braswell Servs.
Grp., Inc., 134 F.3d 219, 224 (4th Cir. 1998) (internal
quotations marks, brackets, and citation omitted). In the
Fourth Circuit, collateral estoppel bars subsequent litiga-
tion of an issue of law or fact when: (1) “the issue sought
to be precluded is identical to one previously litigated”;
(2) “the issue was actually determined in the prior pro-
ceeding”; (3) “the issue’s determination was a critical and
necessary part of the decision in the prior proceeding”;
(4) “the prior judgment is final and valid”; and (5) “the
party against whom collateral estoppel is asserted had a
full and fair opportunity to litigate the issue in the previ-
ous forum.” Collins v. Pond Creek Mining Co., 468 F.3d
213, 217−18 (4th Cir. 2006) (internal quotation marks and
citation omitted).
Allergan alleges that collateral estoppel should not
apply in this case because elements (1), (2), and (5) are
not met. Appellant’s Br. 14. We review these elements in
turn.
1. Identity of the Issues
“Complete identity of claims is not required to satisfy
the identity-of-issues requirement for claim preclusion.”
Soverain Software, 778 F.3d at 1319 (citations omitted).
“If the differences between the unadjudicated patent
claims and adjudicated patent claims do not materially
alter the question of invalidity, collateral estoppel ap-
plies.” Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d
8 ALLERGAN, INC. v. SANDOZ, INC.
1333, 1342 (Fed. Cir. 2013) (citation omitted). For exam-
ple, in Ohio Willow Wood, this court found that issue
preclusion applied where a different claim in another
patent had previously been invalidated because “the[]
patents use[d] slightly different language to describe
substantially the same invention.” Id.
Allergan argues that the Asserted Claims of the ’953
patent present new issues that were not decided in Aller-
gan I, Allergan II, or Allergan III because “prior cases
addressed whether it would have been obvious to use
bimatoprost to increase eyelash growth, not eyelash
darkness” as recited in the Asserted Claims. Appellant’s
Br. 15, see id. at 15−22. In addition, Allergan argues that
the prior art references do not teach increasing eyelash
darkness, id. at 17−19, and that the District Court in
Allergan IV improperly looked to the specification of the
’953 patent, rather than only the Asserted Claims, in
reaching its conclusion that collateral estoppel applied, id.
at 19−20.
The District Court held that the issues related to the
Asserted Claims were identical to those addressed in all
prior litigations against invalidated claims of the ’404,
’054, ’161, and ’988 patents because “[t]he ’953 patent is
not limited to darkness,” citing its “repeated[] references
[to] ‘enhancing the growth’ of eyelashes by increasing
length, thickness[,] and darkness.” J.A. 4. These en-
hancements, it found, were also at issue in Allergan I,
Allergan II, and Allergan III. J.A. 4−5. It also found that
the ’404 patent trial determined issues of eyelash dark-
ness, as found in the District Court’s claim construction of
the term “a method for stimulating hair growth” to mean
“a method of converting vellus intermediate hair to
growth as terminal hair,” where the patent defined vellus
hairs as “fine” and “thin” and defined terminal hairs as
“coarse” and “pigmented.” J.A. 4−5 (internal quotation
marks omitted).
ALLERGAN, INC. v. SANDOZ, INC. 9
We agree with the District Court that the Asserted
Claims are substantially similar to the invalidated claims
of the ’404, ’054, ’161, and ’988 patents, and that any
differences between the claims do not materially alter the
question of invalidity. With respect to the darkness
limitation claimed in the Asserted Claims of the ’953
patent, that limitation was also disputed in all three prior
litigations as one of many attributes flowing from the use
of the claimed bimatoprost solution. During the ’404
patent’s claim construction, Allergan offered, and the
District Court accepted, J.A. 3073, a construction for “a
method for stimulating hair growth” to include “a method
of converting vellus or intermediate hair to growth as
terminal hair,” which would “increas[e] the . . . thickness
of hair,” J.A. 3072. The ’404 patent’s specification defined
vellus hairs as “fine” and “thin” and terminal hairs as
“coarse” and “pigmented.” J.A. 4−5. The ’404 patent’s
specification recites the change from “coarse, pigmented,
long hairs” to “fine, thin, non-pigmented short hairs,” the
type of hair loss that the patented invention seeks to
remedy. ’404 patent col. 1 ll. 36−39. Thus, the parties’
original claim construction dispute included darkness.
The previously litigated patents include several addi-
tional statements that demonstrate that increasing
eyelash darkness was one attribute of their inventions.
For example, the ’404 patent’s specification describes
“increased pigmentation of the lashes” as an example of
more robust hair growth, id. col. 7 l. 51, and describes
lashes treated with the solution as “longer, thicker[,] and
fuller,” id. col. 7 ll. 1−6. Indeed, the ’404 patent claims a
method that enhances hair growth and increases “one or
more” of the following traits: “luster, sheen, brilliance,
gloss, glow, shine or patina.” Id. col. 16 ll. 13−15 (claim
9). The ’054 patent, estopped in Allergan III, goes even
further, making increased eyelash darkness a require-
ment of claim 1. See ’054 patent col. 14 ll. 3−6 (“A method
of increasing eyelash growth in a human including length,
10 ALLERGAN, INC. v. SANDOZ, INC.
thickness and darkness of the eyelashes, the method
comprising administering bimatoprost to an eyelid mar-
gin of the human.” (emphasis added)).
Both the current litigation and prior litigation concern
eyelash darkness as well as broader qualities associated
with hair growth. The patent claims “use slightly differ-
ent language to describe substantially the same inven-
tion” and, thus, satisfy the identity of issues requirement
for finding collateral estoppel. Ohio Willow Wood, 735
F.3d at 1342. 5
2. The Issue Was Actually Determined in
the Prior Litigation
The requirement that an issue have been actually de-
cided is generally satisfied if the issue “was actually
litigated and decided in an earlier proceeding.” Combs v.
Richardson, 838 F.2d 112, 114 (4th Cir. 1988); Restate-
ment (Second) of Judgments § 27(d) (1982) (an issue is
actually litigated if it “is properly raised, by the pleadings
5 Allergan argues in the alternative that the identi-
ty−of−issues requirement is not met because “[n]either
[prior art] references . . . disclose a method of using a
bimatoprost composition to increase eyelash darkness, as
required by the [A]sserted [C]laims of the ’953 patent.”
Appellant’s Br. 17. But “any need or problem known in
the field . . . and addressed by the patent can provide a
reason for combining the elements in the manner
claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418,
420 (2007). We previously found in Allergan II that it
would have been obvious to use a topical application of a
bimatoprost composition to grow eyelashes. Solving the
problem of growing eyelashes would have provided a
motivation to combine the same prior art in the same
manner that is claimed by the ’953 patent to achieve
increased eyelash darkness.
ALLERGAN, INC. v. SANDOZ, INC. 11
or otherwise, and is submitted for determination, and is
determined”). Allergan contends that “the parties never
briefed ‘darkness,’” and “the [D]istrict [C]ourt’s opinion
never discussed it,” such that the issue was never actually
determined. Appellant’s Br. 22; see id. at 19−22.
However, we find evidence in the record sufficient to
hold that the issue was actually determined in Allergan I
and Allergan II. Unlike cases where we have found this
element was not met because “[n]either party requested
that any terms of the . . . method claims . . . be construed”
or “move[d] for a determination of summary judgment,”
Brain Life, LLC v. Elekta, Inc., 746 F.3d 1045, 1055 (Fed.
Cir. 2014), the issue of darkness was discussed in the
claim construction proceedings for the ’404 patent, see
J.A. 3069, 3071−73. Moreover, the claims of the ’404
patent, as construed to include the language covering
increased pigmentation, were litigated by the parties at a
bench trial. See Allergan I, 2013 WL 286251, at *1, *7–8.
The trial record further demonstrates that the parties
debated the language “converting vellus or intermediate
hair to growth as terminal hair” which, as discussed
above, describes a process of increasing eyelash darkness.
Id. at *13 (internal quotation marks and brackets omit-
ted) (reviewing Sandoz’s arguments with respect to the
phrase); see J.A. 3247–48 (Allergan’s proposed findings of
fact in the ’404 patent litigation stating that “Latisse®,” a
“commercial embodiment of claim 14 of the ’404 patent,”
“increas[es] . . . eyelash darkness”), 3248 (Allergan stating
that the use of Latisse® results in “darker eyelash hair”),
3253−54 (Allergan alleging infringement of its ’404 patent
for reasons marked as confidential). We find this suffi-
cient to meet the “actually litigated” prong of the collat-
eral estoppel test.
12 ALLERGAN, INC. v. SANDOZ, INC.
3. Allergan Had a Full and Fair Opportunity to Litigate
the Issues in the Prior Litigation
A judgment will not have a preclusive effect if a pa-
tentee can demonstrate that it did not have a full and fair
opportunity to litigate the issue. Va. Hosp. Ass’n v.
Baliles, 830 F.2d 1308, 1311 (4th Cir. 1987). “Determin-
ing whether a patentee has had a full and fair chance to
litigate the validity of [the] patent . . . is . . . not a simple
matter.” Blonder-Tongue Labs., Inc. v. Univ. of Ill.
Found., 402 U.S. 313, 333 (1971). However, most of the
grounds relevant to this test—e.g., incentive to litigate,
choice of forum, or comprehension of the technical subject
matter—are inapplicable here. See id. at 332−34. Aller-
gan’s full and fair opportunity argument hinges on the ex
parte testimony submitted to the Examiner during the
prosecution of the application leading to the ’953 patent.
Allergan alleges that it did not have the opportunity
to present certain ex parte evidence in Allergan I or
Allergan II because this court changed the legal standard
to prove that one’s own work is not prior art under
§ 102(a) by adding a requirement that the inventor be
“responsible for directing the production of the publica-
tion’s content.” Appellant’s Br. 23 (internal quotation
marks omitted). In support of the purported change in
law, Allergan cites our statement in Allergan II that
“Appellees have not produced evidence that shows [Dr.
VanDenburgh] was responsible for directing the produc-
tion of either article’s content.” Id. at 24 (quoting Aller-
gan II, 754 F.3d at 969) (emphasis added); see id. at
22−26.
Allergan’s arguments are not persuasive. First, Al-
lergan offers no explanation for why such additional
evidence could not have been submitted to the District
Court in Allergan III. See generally id. Second, Allergan
II did not change the applicable legal standard for show-
ing an inventor’s work on a publication removes the
ALLERGAN, INC. v. SANDOZ, INC. 13
material from § 102(a) prior art. Instead, we repeated the
applicable standard articulated in Katz and analyzed the
evidence against that standard. See Allergan II, 754 F.3d
at 969 (stating the relevant inquiry was whether the
references “were solely Dr. VanDenburgh’s work and hers
alone” (citation omitted)). In reaching our conclusion, we
looked to authorship of the reference in question and of
internal pre-publication reports, supervision of clinical
trials, and involvement in the trials and results-
assessment. Id. The language Allergan cites is a descrip-
tive part of the comprehensive, fact-based evidentiary test
in Katz. We quoted Katz in our conclusion, holding that
there was no evidence that Allergan’s explanation of the
prior art references were “in any way consistent with the
content of the articles and the nature of the publications.”
Id. (citation omitted); see Katz, 687 F.2d at 455 (stating
that, in addition to authorship, “[t]he content and nature
of the printed publication” must be considered). Allergan
had a full and fair opportunity to litigate its position, and
all elements of the test for collateral estoppel have been
met.
III. The District Court Erred in Invalidating the Entire
’953 Patent
Finally, notwithstanding collateral estoppel, Allergan
alleges that the District Court “erroneously invalidated
unasserted claims of the ’953 patent” in its final judgment
with respect to Sandoz, Inc. Appellant’s Br. 26 (capitali-
zation omitted). Because Allergan narrowed its assertion
of infringement in its Second Amended Complaint to the
three Asserted Claims, it contends that “[t]he [D]istrict
[C]ourt . . . had no subject matter jurisdiction over any of
the other claims of the ’953 patent and [had] no power to
invalidate them.” Id. We agree.
We may consider the scope of the judgment where it
relates to a question of subject matter jurisdiction, an
issue we review de novo. See Metabolite Labs., Inc. v.
14 ALLERGAN, INC. v. SANDOZ, INC.
Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1369 (Fed.
Cir. 2004); Textile Prods., Inc. v. Mead Corp., 134 F.3d
1481, 1485–86 (Fed. Cir. 1998). Article III courts have
subject matter jurisdiction in a suit where there is an
actual case or controversy. See MedImmune, Inc. v.
Genentech, Inc., 549 U.S. 118, 128–29 (2007). For declar-
atory actions in patent infringement suits, we have clari-
fied that where only certain claims of a patent are raised
in a complaint and additional claims are not asserted or
litigated, additional claims can be included in a final
judgment only where there is a case or controversy for the
court to adjudicate. See Carroll Touch, Inc. v. Electro
Mech. Sys., Inc., 15 F.3d 1573, 1581 n.8 (Fed. Cir. 1993);
see also MedImmune, 549 U.S. at 127 (stating that there
is no bright line rule for determining whether the case or
controversy requirement is satisfied and asking courts to
look at whether the dispute is “definite and concrete,
touching the legal relations of parties having adverse
legal interests,” and is “real and substantial” (internal
quotation marks omitted)). “[C]ourts must look at all the
circumstances to determine whether a declaratory judg-
ment plaintiff has shown a case or controversy between
the parties.” Streck, Inc. v. Research & Diagnostic Sys.,
Inc., 665 F.3d 1269, 1282 (Fed. Cir. 2012) (internal quota-
tion marks omitted).
Allergan’s Second Amended Complaint only asserted
three claims of the ’953 patent. 6 Sandoz, Inc. has not
6 Allergan’s Second Amended Complaint is the op-
erative pleading document here. The Magistrate Judge
entered an order granting leave to file an amended com-
plaint, which was allowed as a matter of course for non-
dispositive motions and was not contested or appealed by
Sandoz. J.A. 1870–74; see Aluminum Co. of Am. v. EPA,
663 F.2d 499, 501 (4th Cir. 1981) (“[E]xceptions [in 28
U.S.C. § 636(b)(1)(a)] are motions which Congress consid-
ALLERGAN, INC. v. SANDOZ, INC. 15
shown a continuing case or controversy with respect to
the withdrawn claims. As in prior cases in which we have
found unasserted claims not invalidated, here, “the pa-
tentee narrowed the scope of its claims . . . before any
dispositive rulings by the court,” and Sandoz, Inc.’s re-
sponse “was limited to the ‘asserted claims.’” Id. at 1283,
1284; see J.A. 1918, 1919 (Sandoz, Inc.’s Rule 12(b)(6)
motion requesting the court dismiss “Allergan’s claims in
its Second Amended Complaint” and “declare that the
claims” are invalid). Moreover, Sandoz, Inc. “did not
present evidence or argument of how the prior [patents]
suggested the additional limitations present in” the
unasserted claims. Sandt Tech., Ltd. v. Resco Metal &
Plastics Corp., 264 F.3d 1344, 1356 (Fed. Cir. 2001); see
J.A. 1978−93 (Sandoz, Inc.’s expert declaration filed with
its motion to dismiss reviewing only the Asserted Claims
and claims referenced therein).
All claims are “presumed valid independently of the
validity of the other claims.” 35 U.S.C. § 282. Consider-
ing all of the circumstances before the District Court, we
find that “[t]here was no case or controversy with respect
to the unasserted claims at the time of the [Rule 12(b)(6)]
motions; therefore the [D]istrict [C]ourt did not have
jurisdiction over the unasserted claims.” Fox Grp., Inc. v.
Cree, Inc., 700 F.3d 1300, 1308 (Fed. Cir. 2012) (citation
omitted). Because we find that the District Court erred in
ered to be ‘dispositive.’”); 28 U.S.C. § 636(b)(1)(a)−(c)
(omitting motion to amend complaint from list of actions
on which a magistrate judge can only issue a recommen-
dation or cannot otherwise rule); Fed. R. Civ. Proc. 72(a)
(instructing magistrate judges to “issue a written order
stating the decision” when appropriate for non-dispositive
matters); J.A. 1918 (Sandoz, Inc.’s Rule 12(b)(6) motion to
dismiss “Allergan’s claims in its Second Amended Com-
plaint”).
16 ALLERGAN, INC. v. SANDOZ, INC.
invalidating the unasserted claims in the ’953 patent, we
reverse the District Court’s order granting collateral
estoppel and finding invalidity of Allergan’s ’953 patent
with respect to Sandoz, Inc. for claims 1−7, 9−22, and
24−25 of the ’953 patent.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. We affirm the District
Court’s judgments with respect to Akorn, Inc., Hi-Tech
Pharmacal Co., Inc., Apotex Inc., Apotex Corp., and
claims 8, 23, and 26 of the ’953 patent as applied to
Sandoz, Inc. We reverse the District Court’s judgment for
Sandoz, Inc. with respect to claims 1−7, 9−22, and 24−25
of the ’953 patent. For these reasons, the final decision of
the U.S. District Court for the Middle District of North
Carolina is
AFFIRMED-IN-PART, REVERSED-IN-PART
COSTS
Each party shall bear its own costs.