Aventis Pharma v. Amphastar and Teva, S. Ct. Appeal No. 08-937 (2009)
The Supreme Court on Monday denied Aventis Pharma's cert petition
in a long-running dispute with generic biopharmaceutical manufacturer
Amphastar. In its petition, Aventis had
asked the Court to review a Federal Circuit decision affirming the unenforceability of its patent on Lovenox.
In particular, Aventis asked the Court to overturn the Federal Circuit's "sliding scale" doctrine-–the doctrine that treats the two prongs of the
inequitable conduct inquiry (materiality and intent) as inversely related to each
other. The doctrine allows a court to
infer that a patentee has acted with deceptive intent if the defendant can show
that the alleged misconduct is highly material.
Amphastar and co-defendant Teva opposed Aventis's
petition. First, they suggested that the "sliding scale" doctrine merely reflects the court's routine use of
circumstantial evidence. When alleged
misconduct is highly material, they asserted, the circumstantial
evidence of deceptive intent is stronger.
Second, Amphastar and Teva argued that Aventis had bypassed the
opportunity to question the "sliding scale" doctrine because it never properly
raised the issue during its Federal Circuit appeal. Aventis responded that the Court could still
entertain the issue because the Federal Circuit's opinion demonstrated that the
appellate panel had relied on the "sliding scale" standard in reaching its
decision.
While the petition was pending, the Federal Circuit began
pulling back the reins a bit on the "sliding scale" doctrine. Last month, Judge Linn wrote a stinging concurrence in Larson
Mfg. v. Aluminart Prods, criticizing the doctrine. Earlier this month, Judge Moore (a member of the panel that heard the Aventis
case) seemed to question the "sliding scale" doctrine in Ariad v. Eli Lilly.
Perhaps the Supreme Court believed that the Federal Circuit
was in the process of correcting itself on this issue. Or maybe the Supremes did not want to grant
cert on an issue that the petitioner had largely ignored in its earlier
appeal. In any event, the "sliding
scale" doctrine remains intact.
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