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« Wilson v. Martin (Fed. Cir. 2019) | Main | Federal Circuit Holds APJs Are Principal Officers »

October 31, 2019


Footnote 3: "The dissent, making an argument not advanced by Idenix at trial or before us, reaches the opposite conclusion only by disregarding the district court’s binding claim construction, ignoring the resulting stipulation of infringement, and analyzing a case that is not the one presented to us."

Kind of an important point, innit? The claim construction agreed to by the parties is bizarre: the claim plainly recites a "nucleoside", yet the construction throws away the 2" hydroxyl and brings 2'-deoxynucleosides within the scope. This may have suited their respective litigation strategies, but it's factually wrong, and it's what leads to the odd decision arrived at by the majority.

I supposed it depends on whether you think the court is there to come to the right decision or to decide the case before them warts and all. The only reason for the former at the Federal Circuit is the effect of a precedential decision on the rest of patent law. Certainly ways to decide this case without these consequences (making it non-precedential, for example).

This opinion and the dissent remind me of those few well-reported cases in which a single patent issued by the EPO is litigated in various national jurisdictions, all within the EPC-space where the rules of claim construction are common to all national courts but where the courts differ in their opinions.

But I cannot recall any such cases in the very recent past, where a court in one EPC State decides "infringed but invalid" even while one in another EPC State decides "not invalid but not infringed either".

Perhaps that is because the judges in national patents courts in EPC-land really do not like disagreeing with each other in public, but very much enjoy arguing with each other in private, so regularly caucus together (like all academics) to debate, score points, and clarify their thinking.

One would think that a powerful dissent to a Federal Circuit opinion would help SCOTUS to bring the needed legal clarification. Instead, such a dissent seems only to confuse everybody.


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