At a recent pretrial conference, Judge Richard G. Andrews denied the parties’ motions in limine. Fresenius Kabi USA, LLC v. Dr. Reddy’s Laboratories, Ltd., et al., C.A. No. 13-925-RGA, C.A. No. 13-1015-RGA (D. Del. May 23, 2014). One of defendants’ motions in limine asked the court to not apply to infringement under the Doctrine of Equivalents the Federal Circuit’s decision in Sunovion Pharm., Inc. v. Teva Pharm. USA, Inc., 731 F.3d1271 (Fed. Cir. 2013). Judge Andrews denied the request:
Defendants point out that Sunovion was a much clearer case of infringement than this one, but that does not warrant disregarding the law of the Federal Circuit. There the Court held that “any so-called certification pledging not to infringe cannot override the conclusion that when a drug manufacturer seeks FDA approval to market a generic compound within the scope of a valid patent, it is an infringement as a matter of law.” Sunovion, 731 F.3d at 1280. The Court did not say “a generic compound which literally infringes” a valid patent. The Doctrine of Equivalents is “within the scope” of a valid patent. Furthermore, Sunovion is not the only case directing that an ANDA specification guide the question of infringement. See, e.g., Abbott Labs. v. TorPharm, Inc., 300 F.3d 1367, 1373 (Fed. Cir. 2002).
Id. at 1-2.