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Medicines Co. v. Hospira, Inc.

Distribution Agreement Sufficient to Invoke On-Sale Bar

Medicines Co. v. Hospira, Inc., 2018 WL 717186(Fed. Cir. Feb. 6, 2018) (Dyk, Wallach, HUGHES) (D. Del.: Andrews) (3 of 5 stars)

Fed Cir affirms noninfringement determination, and remands determination that the patent was not proved invalid. The Fed Cir had previously determined that Medicines’ patents required “efficient mixing” as described in the specification (853 F.3d 1296 (Fed. Cir. 2017)). The district court did not err in concluding that Hospira’s process did not include such mixing. The district court erred in reasoning that a 2007 Distribution Agreement was not an “offer for sale.” Per the Fed Cir’s prior Medicines decision (827 F.3d 1363 (Fed. Cir. 2016) (en banc)), the 2007 was clearly an agreement “to sell and purchase the product.” Op. at 6. That Medicines had an option to reject submitted purchase orders does not change the agreement’s character, and the opinion describes how the parties conduct surrounding the agreement confirmed that the agreement was an offer to sell Angiomax (Medicines’ patented product). The opinion notes that the agreement here is “very similar to the agreement in Helsinn, 855 F.3d 1356 (Fed. Cir. 2017),” and to Enzo Biochem, 424 F.3d 1376 (Fed. Cir. 2005), both of which were found to involve commercial offers of sale. That Medicines was acting as a supplier to its distributor did not exempt the agreement from the on-sale bar, per In re Caveney, 761 F.3d 371 (Fed. Cir. 1985), and the prior Medicines decision. While the agreement was for sale of Angiomax, a question remained as to “whether the Distribution agreement covered the Angiomax created by the new, patented process.” Op. at 10. The district court should address this issue on remand. The district court did not err in determining that Medicines’ invention was ready for patenting before the critical date.

KEYWORDS: ON-SALE BAR