This is a patent case. Amgen Inc. (“Amgen”) is the owner of U.S. Patent Nos. 5,441,868 (“the ’868 patent”), 5,547,933 (“the ’933 patent”), 5,618,698 (“the ’698 patent”), 5,756,349 (“the ’349 patent”), and 5,955,422 (“the ’422 patent”). The patents relate to the production of the protein erythropoietin (“EPO”) using recombinant deoxyribonucleic acid (“DNA”) technology. All five patents share a common specification and descend from Application No. 06/675,298 (“the ’298 application”), which issued as now-expired U.S. Patent No. 4,703,008 (“the ’008 patent”).
In November of 2005, Amgen brought a declaratory judgment action against F. Hoffman-La Roche Ltd, Roche Diagnostics GMBH, and Hoffman-La Roche Inc. (“Roche”) in the United States District Court for the District of Massachusetts, alleging that Roche’s product, MIRCERA®, would infringe Amgen’s five patents if imported into the United States. Roche responded with affirmative defenses and counterclaims that Amgen’s asserted patents were invalid and not infringed. In October of 2008, following rulings of summary judgment and judgment as a matter of law (“JMOL”), and a jury trial, the court entered judgment that the ’868, ’933, ’698, and ’422 patents were infringed and not invalid, and that the ’349 patent was neither invalid nor infringed. Amgen, Inc. v. F. Hoffman-La Roche Ltd., No. 05-12237-WGY, slip op. at 1–2 (D. Mass. Oct. 17, 2008) (“Final Judgment”). Accordingly, the court granted Amgen declaratory relief and permanently enjoined Roche from marketing MIRCERA® in the United States. Id.
Roche appeals from several rulings of the court. Specifically, Roche challenges the court’s rulings that none of the claims-in-suit were invalid for obviousness-type double patenting, Amgen, Inc. v. F. Hoffman-La Roche Ltd., 581 F. Supp. 2d 160, 173, 186, 192 (D. Mass. 2008); and that claim 1 of the ’422 patent was neither anticipated nor indefinite and infringed, id. at 194, 198, 204. Roche also challenges the court’s rulings sustaining the jury’s verdict that claims 3, 7, and 8 of the ’933 patent were neither anticipated nor indefinite; and that claims 3, 7, and 8 of the ’933 patent, claims 1 and 2 of the ’868 patent, and claims 6–9 of the ’698 patent were literally infringed.
Amgen cross-appeals from the court’s rulings that claim 7 of the ’349 patent and claims 9, 11, and 14 of the ’933 patent were not infringed. Amgen also cross-appeals from the court’s ruling vacating the jury’s verdict that claim 12 of the ’933 patent was infringed under the doctrine of equivalents (“DOE”). Id. at 205.
We vacate the court’s grant of summary judgment and of JMOL to Amgen of no invalidity for obviousness-type double patenting of claims 3, 7, and 8 of the ’933 patent; claim 1 of the ’422 patent; and claim 7 of the ’349 patent. We therefore remand to the district court for an obviousness-type double patenting analysis of those claims in light of this opinion. We also vacate the court’s grant of JMOL to Roche of non-infringement of claim 7 of the ’349 patent and remand to the district for a new trial on infringement of that claim. We affirm the court’s judgment in all other respects.
