Oral Argument: Novo Nordisk v. Sanofi-Aventis

Posted on | July 11, 2008 | No Comments

2008-1225 Novo Nordisk v. Sanofi-Aventis
D/NJ 07-CV-3206
Judge Mary L. Cooper

Judges Lourie, Bryson, Prost heard oral argument on Thursday in this case: a link to the audio from the Federal Circuit is here, and our post on the briefs is here.

I listened to the audio and made a few very rough notes on the argument.  My notes are not intended to be a complete guide to or summary of the arguments (and they clearly are not)–rather, simply issues, statements or questions that struck me as interesting while I listened.

David Tulchin of Sullivan Cromwell argued for Novo Nordisk.
Argument starts with questions from the panel as to whether the
district court’s claim construction decision, in the context of a
preliminary injunction, is entitled to some deference or is it de
novo?  At 8:06 the court inquires as to whether there can be such a thing as a
substantial question of claim construction, and at 11:10 acknowledges
that Novo’s strongest argument is that "gearbox" is not used expressly
stated in the claim.

Paul Berghoff of McDonnell Boehnen Hulbert & Berghoff argued for
Sanofi starting at 13:30, and first addressed the standard of review by
urging an abuse of discretion.  At 18:20 begins a long
question/hypothetical from the court as to instances where the patentee
has broadened the scope of the claims mid-prosecution: paraphrasing the judge, "isn’t it
"artificial" to use pre-amendment evidence of scope to define or limit
the scope of the ultimate (broadened) claims?"  At 27:00 Sanofi is
invited to overcome the claim differentiation argument by identifying
features in claim 2–other than a gearbox–not in claim 1.  The judge does not seem too impressed with Sanofi’s answer, but Mr. Berghoff does point to waiver
and disclaimer language, and also points out that claim differentiation
is not a rule but a guide.

David Tulchin’s rebuttal is at 28:54.   

Not really discussed is the result if the CAFC reverses on claim construction–should it order the preliminary injunction entered or must it remand for consideration of the other preliminary injunction issues and factors?  Mr. Tulchin stated relatively early (first couple minutes) that the claim construction was the only issue on which the court denied the PI–implicitly suggesting that it should enter if the claim construction is changed.

Also, I neglected to note the time, but a judge seemed troubled by the fact that the district court case has been stayed pending the appeal–perhaps feeling that this is really an interlocutory appeal of claim construction (with the parties and district court assuming that the appeal will produce a definitive claim construction for the rest of the case) rather than an appeal of a denied preliminary injunction.   

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