VItiation Vitiated?

Abbott Laboratories v. Andrx Pharmaceuticals, Inc., [06-1101] (January 5, 2007)[PROST, Michel, Ellis]
BRIEF: Andrx appealed the grant of a preliminary injunction against infringement of three patents, and the Federal Circuit. “To overturn the grant of a preliminary injunction, we must find that the district court made a clear error of judgment in weighing the relevant factors or based its exercise of discretion on an error of law or on clearly erroneous factual findings.” Andrx argued that Abbott was collaterally estopped from asserting the patents against it because preliminary injunctions were denied by the same against Teva and Ranbaxy because the patents in-suit were likely to be shown to be invalid or unenforceable. Applying the law of the local (Seventh) circuit on a procedural issue not unique to patent law, the Federal Circuit considered whether collateral estoppel applied. The Federal Circuit said that Blonder-Tongue permitted the use of defensive collateral estoppel when the accused infringer shows (1) that a patent was found invalid in a prior case that had proceed through final judgment and in which all procedural opportunities were available to the patentee; (2) that the issues litigated were identical; and (3) that the party against whom estoppel is applied had a full and fair opportunity to litigate. The Federal Circuit noted that on occasion the Seventh Circuit had treated a finding in a preliminary injunction hearing as a final judgment, but concluded that the preliminary injunction proceedings against Teva and Ranbaxy were not “full litigation and decision on the merits for purposes of issue preclusion.”
The Federal Circuit also construed the term “pharmaceutically acceptable polymer” which was described in the specification: “The pharmaceutically acceptable polymer is a water-soluble hydrophilic polymer selected from the group consisting of . . .”. The Federal Circuit rejected the application of Ex Parte Markush to the interpretation of the written description, and relieved the patentee from its unfortunate choice of words, finding that this did not amount to an express definition, nor was it necessarily limiting on the scope of pharmaceutically acceptable polymer.
Andrx argued that the district court’s finding of infringement under the Doctrine of Equivalents violated the specific exclusion principle, and in any event vitiated the missing claim element. The Federal Circuit rejected the arguments based on the specific exclusion principle because under the broader construction reached by the Federal Circuit, the accused equivalent was no longer “specifically excluded.” Regarding vitiation, the Federal Circuit reminded that “[a] claim element is not vitiated merely because it does not literally exist in the accused product – “such an interpretation of the ‘all elements’ rule would swallow the doctrine of equivalents entirely.” In the end the Federal Circuit could not fine error in the District Court’s determination that Abbot was likely to prevail.