July 14, 2017

Case Name: The Medicines Co. v. Mylan Inc., Civ. No. 11-cv-1285, 2017 U.S. Dist. LEXIS 99898 (N.D. Ill. June 28, 2017) (St. Eve, J.)

Drug Product and U.S. Patent: Angiomax® (bivalirudin); U.S. Patents Nos. 7,582,727 (“the ’727 patent”) and 7,598,343 (“the ’343 patent”)

Nature of the Case and Issue(s) Presented: The issue was whether an infringement trial relating to the doctrine of equivalents should occur after the Federal Circuit affirmed a finding of non-infringement as to one asserted patent and reversed the finding of infringement as to the other asserted patent. Plaintiff argued that the Federal Circuit provided a new claim construction for one limitation and did not expressly rule on whether infringement under the doctrine of equivalents would be available under this new construction. Mylan argued that the Federal Circuit did not remand the case for such determination, but rather decided all issues of infringement in favor of Mylan.

The district court found that the mandate precluded a new infringement trial concerning the issue of equivalents.

Why Mylan Prevailed: The district court held that the mandate applied because the Federal Circuit either affirmed or decided, based on the record, all issues related to infringement. The court noted that the Federal Circuit did not remand the case, but rather affirmed-in-part and reversed-in-part the original ruling of the district court as to infringement. Moreover, the Federal Circuit affirmed that a limitation in both patents was not present in the accused products, such that the issue of infringement was decided by the Federal Circuit and the mandate rule precluded the district court from conducting a new trial on the issue.