This morning the Federal Circuit issued a precedential opinion in a patent case in which the court reinstated a jury verdict of infringement over a dissent by Judge Prost. The court also issued an erratum. Here is the introduction to the opinion and a link to the erratum.

GlaxoSmithLine LLC v. Teva Pharmaceuticals USA, Inc. (Precedential)

GlaxoSmithKline LLC and SmithKline Beecham (Cork) Ltd. (collectively, GSK) sued Teva Pharmaceuticals USA, Inc. in the United States District Court for the Dis- trict of Delaware for infringement of claims of GSK’s Reissue Patent No. RE40,000. After the jury’s verdict of infringement and its award of damages, the district court granted Teva’s renewed motion for judgment as a matter of law of noninfringement. GlaxoSmithKline LLC v. Teva Pharm. USA, Inc., 313 F. Supp. 3d 582 (D. Del. 2018) (Dist. Ct. Op.). GSK appeals the JMOL, and Teva conditionally cross-appeals the jury’s damages award. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

For the reasons below, we vacate the grant of JMOL, reinstate the jury’s verdict and damages award, and remand for appropriate further proceedings.

PROST, Circuit Judge, dissenting.

GSK’s patent on carvedilol expired in 2007. At the time, however, it still had a patent on one of carvedilol’s three FDA-approved uses. Because the FDA cannot authorize a generic version of a drug that would infringe a patent, this one remaining patented use could have prevented a less-expensive, generic carvedilol from coming to market altogether—even though the drug itself and other uses of it were unpatented. Congress saw this problem coming. It wanted to make sure that one patented use wouldn’t prevent public access to a generic version of a drug that also has unpatented uses. See Caraco Pharm. Labs. Ltd. v. Novo Nordisk A/S, 566 U.S. 399, 415 (2012). So it created rules for just this situation.

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So, what’s next? We are now on the majority’s second opinion in this case. The first was vacated in light of Teva’s petition for rehearing and the eight amicus briefs in support. This new opinion does little to assuage, and even exacerbates, concerns raised by the original.

I respectfully dissent.