Judge Noreika had a rare holding estopping a plaintiff from asserting the lone patent-in-suit patent due to collateral estoppel after trial.
The Court held a five-day bench trial in Biogen Int'l GmbH v. Amneal Pharms. LLC, C.A. No 17-823-MN in December 2019, dealing with a host on invalidity issues, including obviousness, enablement, and written description. The parties completed post-trial briefing in March 2020, and and a final opinion was thus expected in the not-too-distant future.
Unfortunately for Biogen, they also sued a different defendant, Mylan, in the Northern District of West Virginia on the same patent. That case went to trial in February 2020, on the sole issue of written description. In an impressive turn of speed, the West Virginia Court issued its post-trial opinion invalidating the patent for lack of written description in June, while the Delaware case was still pending.
In subsequent briefing, Biogen did not seriously contend that the written description issue was different in the Mylan litigation, or that it was not ably represented in that case. Instead, it argued that, the court should decline to apply the doctrine because the case here had already gone to trial, and thus judicial economy or basic fairness would be better served if the Court issued its own decision on the issues. Judge Noreika, however, found that the Court had no discretion to decline to apply collateral estoppel based on nebulous considerations of justice and equity "when the four requirements are otherwise satisfied." Biogen Int'l GmbH v. Amneal Pharms. LLC, C.A. No 17-823-MN, D.I. 402 at 18 (D. Del. Sept 16, 2020).
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
