Case: Pronova BioPharma Norge AS v. Teva Pharmaceuticals USA, Inc., Nos. 2012-1498, -1499 (Fed. Cir. Sept. 12, 2013) (non-precedential). On appeal from D.Del. Before Dyk, O’Malley, and Wallach.

Procedural Posture: Defendants appealed judgments of validity, enforceability, and infringement of two asserted patents; CAFC reversed and ordered judgment entered for defendants.

  • Invalidity Based on Public Use: The CAFC confirmed that a public use requires the disclosure of all aspects of the claimed invention in public and without limitations regarding secrecy or use. The CAFC ruled that the plaintiff’s submission of samples of the claimed formulation to a research scientist without restriction, along with a disclosure of the compound’s formulation and the scientist’s subsequent confirmatory analytical testing constituted an invalidating public use. The CAFC rejected the patentee’s argument that the samples had to actually be used for their intended purpose (or at least ingested) in order to constitute an invalidating public use. In view of this determination, the CAFC did not reach the other appealed issues.
  • Mootness in view of Expiration: The second patent expired in March 2013, and since the Hatch-Waxman Act afforded the plaintiff only prospective relief, the CAFC ruled any issues regarding this patent were moot.