On October 20, 2014, the Federal Circuit vacated an order granting summary judgment of non-infringement in favor of Pfizer where the Southern District of California found that the preliminary infringement contentions were deficient and because the plaintiff, AntiCancer, objected to a fee-shifting sanction imposed as a condition of supplementing those contentions. The patents related to the imaging of gene expression used in cancer control and treatment.

While at the district court, the court issued a docket control order that called for AntiCancer to submit its preliminary infringement contentions just five days after it amended its complaint to add patent infringement allegations. AntiCancer complied with the docket control order and filed its preliminary infringement contentions based off the scientific publications of Pfizer and another defendant. Four months later (but nine months before the close of fact discovery), Pfizer filed a motion for summary judgment of non-infringement stating that the preliminary infringement contentions were deficient. The district court agreed as to three claim elements, and it authorized AntiCancer to supplement its contentions but only if AntiCancer paid Pfizer’s attorneys’ fees and costs related to the summary judgment motion. AntiCancer objected to the fees/costs condition, and the district court entered summary judgment.

On appeal, AntiCancer argued that the fee-shifting condition amounted to an improper sanction under 9th Circuit precedent, and that summary judgment on that condition was improper. AntiCancer argued that its “infringement theories were as crystallized as they could be” before AntiCancer could “possibly have taken any discovery to support its infringement claims and to learn the actual details of the defendants’ internal research activities.” Further, they argued the local patent rules contemplate that discovery will follow after the contentions are served, so complete proof infringement is not required in the preliminary contentions.

In vacating the district court’s order, the Federal Circuit appears to have relied on 9th Circuit law to determine whether the sanction was appropriate, as opposed to making a sweeping decision regarding the sufficiency of infringement contentions. Indeed, the Federal Circuit agreed that the district court could have properly required additional specificity in the infringement contentions, but found no showing of bad faith on the part of AntiCancer. Therefore, the Federal Circuit found that fee-shifting sanction conditioned on AntiCancer’s supplementation could not be sustained.

AntiCancer, Inc. v Pfizer, Inc., 2013-1056 (Fed. Cir. October 20, 2014).