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King Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA, Inc.

Citation: 185 F. App'x 939Docket: Misc. No. 821

Court: Court of Appeals for the Federal Circuit; May 1, 2006; Federal Appellate Court

Narrative Opinion Summary

In a patent dispute between Teva Pharmaceuticals USA, Inc. and King Pharmaceuticals, Inc., Teva sought to appeal a decision from the United States District Court for the District of New Jersey. The case centered on Teva's motion to dismiss an ANDA infringement suit, arguing that the relevant patent had expired due to a terminal disclaimer under 35 U.S.C. § 253. Teva contended that this disclaimer conflicted with the provision for patent term extensions due to FDA delays under 35 U.S.C. § 156. The district court rejected Teva's argument, affirming that a terminally disclaimed patent could still receive an extension under § 156. Teva's request for an interlocutory appeal was denied, as the court found no conflicting judicial opinions to warrant such a review and deemed Teva's argument more suitable for a final judgment appeal. The court exercised its discretion, referencing precedent and ultimately deciding that the interlocutory appeal was unwarranted at this stage, leaving Teva the option to pursue its claims in a future appeal.

Legal Issues Addressed

Discretionary Nature of Interlocutory Appeals

Application: The court exercised its discretion in denying Teva's petition for interlocutory appeal, citing lack of conflicting judicial opinions and the premature nature of the request.

Reasoning: The decision to grant an appeal lies within the court's discretion, and the court cited precedent (In re Convertible Rowing Exerciser Patent Litigation) in its evaluation.

Interlocutory Review and Final Judgment

Application: Teva's arguments were deemed more appropriate for a subsequent appeal after final judgment rather than at the interlocutory stage.

Reasoning: The court noted that Teva could raise its arguments in a subsequent appeal after a final judgment but did not justify an interlocutory review at this stage.

Patent Term Extension under 35 U.S.C. § 156

Application: The court held that a terminally disclaimed patent is still eligible for a patent term extension due to FDA delays under § 156.

Reasoning: The district court rejected this argument, asserting that a terminally disclaimed patent remains eligible for extension under § 156.

Terminal Disclaimer under 35 U.S.C. § 253

Application: Teva argued that a patent with a terminal disclaimer under § 253 should not be eligible for extension under § 156, but this was rejected by the district court.

Reasoning: Teva contended that the provision allowing for patent term extensions due to FDA delays under 35 U.S.C. § 156 conflicted with § 253 and should be deemed inoperable.