A Fast, Cheap and Good Way to Win a Patent Case, and Pre-Litigation Considerations regarding a Rule 12(c) Motion
Patent cases are costly. As a defendant, other than surrendering and take a (bad) deal to settle the case early on, is there a way to really cut down on the cost of the litigation?Better yet, is there a way to win within a few months, and without spending hundreds of thousands of dollars?As two Federal Circuit cases show, there is, in a suitable case.
This “fast, cheap, and good” way of winning a patent case is called a motion for judgment on the pleadings (“Rule 12(c) motion”). Such a motion can be filed as soon as the answers are filed, and be decided within months.A Rule 12(c) motion does not require—actually, does not even allow—any discovery, expert testimonies, or extraneous material.The pleadings and the documents integral to the pleadings are all the case material a judge can consider to decide a Rule 12(c) motion.When the issue is clear-cut, the defendant can win outright or at least narrow the scope of a multi-patent case quickly, and it would cost a small fraction of the cost of expert discovery and trial.
Patent cases often involve highly technical subject matter, and a common refrain is that the patent claims need to be first “construed” to be understood, and then technical experts need to provide detailed analyses following the court’s claim construction, before any infringement or validity issues can be decided. Therefore, as this reasoning goes, patents case are not suitable for a Rule 12(c) motion. Expert discovery is usually near the end of a case. By the time claim construction and expert discovery is done, the parties are often already planning for trial. Years would have already passed since the lawsuit was filed, and millions have already been spent.
But there is hope. A pair of 2020 opinions from the Federal Circuit show that Rule 12(c) motion can be the winning strategy in cases involving clear-cut non-infringement positions or a legal issue.
Use of Rule 12(c) Motions for Judgment on the Pleadings In Patent Infringement
Both parties can avail themselves of a Rule 12(c) motion. For a plaintiff-patentee, a well drafted Complaint can elicit admissions in the Answer. If certain allegations are narrowly pled, it may be difficult for a defendant to deny the allegation. At the close of the pleadings, the patentee could move for a Rule 12(c) finding of infringement.
On the defendant side, a well drafted Answer can set up the Rule 12(c) motion. A defendant may choose to attach Exhibits to the Answer to form part of the pleadings. The Answer can particularly point out missing elements in the accused product. The Answer can also be used to identify why there is no literal infringement or infringement under the Doctrine of Equivalents (DOE).
In Eagle Pharmaceuticals v. Slayback Pharma, the defendant won on non-infringement. The patent claim recites a pharmaceutical composition, including the element of a “pharmaceutically acceptable fluid,” which can be propylene glycol (PG). The patent specification, however, describes ethanol as an alternative to PG as a pharmaceutically acceptable fluid in such a composition. The District of Delaware and the Federal Circuit both held that, because ethanol as the “fluid” was described in the patent, but not claimed by it, the “ethanol as the fluid” subject matter was dedicated to the public, and any composition with ethanol as the “fluid” does not infringe. The case was decided on a Rule 12(c) motion in the district court without any discovery, expert testimony, claim construction, or even an oral argument. In fact, the District of Delaware ruled on the defendant’s motion within five months of the filing of the case.
In Biogen v. Banner Life Sciences, the defendant won on a legal issue regarding patent term extension. The patent in that suit claims treating multiple sclerosis (MS) with either dimethyl fumarate (DMF) or methyl hydrogen fumarate (MMF). The patent would have expired in 2018, but the patent term was extended based on Biogen’s DMF product. Banner Life Sciences filed a § 505(b)(2) NDA for an MMF product to treat MS. Through a statutory analysis, the District of Delaware and the Federal Circuit both held that, because the patent term extension statute, 35 U.S.C. 156(f), defines a “product” as the API and its salt or ester, but MMF is not Biogen’s DMF API, nor DMF’s salt or ester, the patent term extension cannot be applied to Banner’s NDA product. This is true even though MMF is a metabolite of DMF. Although the district court heard oral argument and took a while longer to issue a ruling, the motion was still decided before the close of discovery.
And it’s not just infringement or a purely legal issue that can be evaluated in a Rule 12(c) motion. The Federal Circuit has upheld the use of a Rule 12(c) motion for invalidity based on Section 101 lack of patentable subject matter.
It is now incumbent upon patent owners and accused infringers alike to rethink their strategies in view of these new developments. Patentees need to consider, for example, how to draft a patent claim to minimize the risk of a successful Rule 12(c) motion against the patent. On the other hand, a potential defender needs to consider how to develop one’s product to allow the filing of Rule 12(c) motion when an inevitable patent lawsuit materializes. That is, counsel can advise during product development to maximize the chance of an early Rule 12(c) motion.