Tuesday, May 12, 2020

Dedication-Disclosure Slayback

On May 8, 2020, the United States Court of Appeals for the Federal Circuit ("CAFC") decided Eagle Pharmaceuticals v. Slayback Pharma.  Slayback - a moniker that clearly represents a missed naming opportunity in the field of heavy metal bands - evokes exactly what happened to Eagle Pharmaceuticals, whose four asserted patents the CAFC found not to have been infringed on the pleadings.  Representative claim 1 of its United States Patent No. 9,572,796 ("'796 patent") recites, among other elements, "a pharmaceutically acceptable fluid comprising a mixture of polyethylene glycol and propylene glycol".

Eagle Pharmaceuticals invoked the doctrine of equivalents "assert[ing] that the ethanol in Slayback [Pharma]’s product is insubstantially different from the propylene glycol ("PG") in the claimed composition."  In response, Slayback Pharma "argued that the disclosure-dedication doctrine barred Eagle [Pharma]’s claim of infringement under the doctrine of equivalents because the asserted patents disclose, but do not claim, ethanol as an alternative solvent to PG. The '796 patent also disclosed "ethanol"".

The CAFC affirmed the decision of the United States District Court for the District of Delaware, finding as follows:
Here, we conclude that the only reasonable inference that can be made from the patent disclosures is that a skilled artisan would understand the patents to disclose ethanol as an alternative to the claimed PG.  Nothing in the record permits us to infer that a skilled artisan “would have understood that the patent specification describes distinct categories of formulations that contain different ingredients and work in different ways.” Appellant Br. 44.  As a result, even when viewing the pleadings in the light most favorable to Eagle, we conclude there is no material issue of fact to resolve and Slayback is entitled to judgment in its favor as a matter of law.
Both the district and appeals courts decided Eagle Pharma's arguments flew in the face of the dedication-disclosure doctrine.