Last Month at the Federal Circuit - November 2011


In this issue: Reexamination Estoppel Takes Effect Only After All Appeal Rights Are Exhausted; Expenditures on Patent Litigation Do Not Automatically Constitute Evidence of a Substantial Investment in the Exploitation of a Patent; Board Erred by Relying on New Factual Findings Without Designating a New Ground of Rejection; Patentee Cannot Assert That an Allegedly Infringed Claim Element Is a Trade Secret; Federal Circuit Affirms SJ Decision Based on Multiple Claim Construction Determinations; Failure to Object to Special Master’s Claim Construction Within Period Specified by Court Order or Federal Rules Results in Waiver; eBay Ended Presumption of Irreparable Harm in Determining the Appropriateness of Injunctive Relief, but the Fundamental Nature of Patents as Property Rights May Not Be Ignored; Agreement with a Formula Calculating “Actual Damages” Precludes Prejudgment Interest; and Section 146 Establishes De Novo Review.

In Sanofi-Aventis v. Apotex Inc., No. 11-1048 (Fed. Cir. Oct. 18, 2011), a divided panel of the Federal Circuit reversed the district court’s decision awarding Sanofi-Aventis (“Sanofi”) prejudgment interest in addition to “actual damages” specified by its settlement agreement with Apotex Inc. and Apotex Corp. (collectively “Apotex”). The Court found that use of the phrase “actual damages” included “all damages necessary to compensate Sanofi for Apotex’s infringement.” Slip op. at 11. Further, because prejudgment interest is a form of compensatory damages, an additional award of prejudgment interest was not warranted. Thus, the Court held that “[b]y agreeing to a formula to calculate Sanofi’s ‘actual damages’ in the May 2006 agreement, Sanofi gave up any right to supplement its recovery with additional prejudgment interest.” Id. at 15. See this month’s edition of Last Month at the Federal Circuit for a full summary of this decision.

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