Eli Lilly and Company v. Sicor Pharmaceuticals, Inc. (now Known As Teva Parenteral Medicines, Inc.)

# NOTE: This order is nonprecedential United States Court of Appeals for the Federal Circuit

ELI LILLY AND COMPANY,
Plaintiff-Appellant,
v.
SICOR PHARMACEUTICALS, INC.
(NOW KNOWN AS TEVA PARENTERAL MEDICINES, INC.)
AND TEVA PHARMACEUTICALS USA, INC.,
Defendants-Cross Appellants.

2010-1342, -1343

Appeals from the United States District Court for the
Southern District of Indiana in case no. 06-CV-0238,
Judge Sarah Evans Barker.

ON MOTION

Before GAJARSA, MAYER and PROST, Circuit Judges.
GAJARSA, Circuit Judge.

ORDER

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Eli Lilly and Company (Eli Lilly) moves without oppo-
sition to lift the stay of proceedings and to dismiss appeal
no. 2010-1343 as moot. Eli Lilly further moves to allow
its appeal no. 2010-1342 to be briefed. Because we agree
with Sicor Pharmaceuticals, Inc. et al. (Sicor) that Eli
Lilly's appeal is controlled by our decision in Sun Pharm.
Indus., Ltd. v. Eli Lilly and Co., 611 F.3d 1381 (Fed. Cir.
2010), we summarily affirm.

The 2010-1342 appeal arises out of a Hatch-Waxman
Act case in which Eli Lilly alleged patent infringement of
claim 7 of U.S. Patent No. 5,464,826. Sicor argued that
claim 7 was invalid for obviousness-type double patent-
ing. Sicor further argued that Eli Lilly was collaterally
estopped from arguing that obviousness-type double
patenting did not apply to claim 7 because Eli Lilly had
lost on that very argument in Sun Pharm. Indus., Ltd. v.
Eli Lilly & Co., 647 F.Supp.2d 820 (E.D. Mich. 2009),
which was then on appeal before this court. Eli Lilly
appealed the collateral estoppel determination. This
court stayed these appeals pending the outcome of the
Sun Pharm. appeal. In July 2010, this court affirmed the
trial court's determination in Sun Pharm. that claim 7
was invalid for obviousness-type double patenting. In
November 2010, a combined petition for panel rehearing
and rehearing en banc was denied by the court. See Sun
Pharm. Indus., Ltd. v. Eli Lilly and Co., 625 F.3d 719
(Fed. Cir. 2010).

Under Blonder-Tongue v. Univ. Found., 402 U.S. 313
(1971), once a court determines that a patent is invalid in
a proceeding where the patent owner had a full and fair
opportunity to adjudicate the issue, the patent owner is
collaterally estopped from relitigating the issue in a
future case. Eli Lilly does not dispute that the trial court
correctly applied the collateral estoppel doctrine in this
case. Instead, Eli Lilly's sole objection to summarily

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affirming the district court's judgment is that it "contin-
ues to believe that the Sun decision was wrongly decided
for all the reasons previously raised by Lilly and noted by
the dissenting judge [in the denial of en banc order.]"
Because the trial court's decision is "so clearly correct as a
matter of law that no substantial question regarding the
outcome of the appeal exists," Joshua v. United States, 17
F.3d 378, 380 (Fed. Cir. 1994), we agree with Sicor that
summary affirmance is clearly appropriate here.

Accordingly,

IT IS ORDERED THAT:

(1) The motion to lift the stay is granted.

(2) The motion to dismiss appeal no. 2010-1343 as
moot is granted.
.

(3) The motion to summarily affirm appeal no. 2010-
1342 is granted.

(4) Each side shall bear its own costs.

FOR THE COURT

MAY 26 2011

/s/ Jan Horbaly

Date

Jan Horbaly Clerk

cc: Charles E. Lipsey, Esq.
Elizabeth J. Holland, Esq.

s19

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
MAY 2 6 2011

JAN HORBALY
CLERK