Enhanced scrutiny and intrigue often accompany cases that end up being presided over by circuit court judges in a designation capacity. This scenario is especially prevalent in patent litigation which is relatively common in places with a massive caseload, such as Delaware. The northern state currently holds the distinction for the most prolonged list of visiting judges holding prior experience in appellate courts.
Such an arrangement holds a multitude of benefits. It allows appellate judges first-hand exposure to the minutiae of trial-level procedures in patent disputes. Importantly, this bench-marking and interchanging of experiences also benefit trial court judges who get to understand how their decisions will be treated in appeals. Moreover, the process allows legal professionals to grasp how these judges tackle issues arising in the progress of a case.
Nonetheless, the involvement of judges from other circuit courts provides more significant fascination for a couple of reasons. First, the complex nature of patent law presents an array of issues that become even more intriguing when seen from the perspective of judges usually dealing with non-patent areas. This experience often leads them to draw comparisons between patent and other IP issues such as copyright and trademark. Consequently, it provides fresh insights into traditional legal queries. Second, observing the analytical prowess and eloquence of our federal courts’ respected legal practitioners applying themselves to patent law is a fascinating experience for many in the field.
An outstanding example of such a case is the Third Circuit’s Hon. Stephanos Bibas. Bibas recently contributed to a Delaware District pharmaceutical patent dispute, Galderma v. Lupin. This case centered on the use of a powerful antibiotic, doxycycline, in a branded product called Oracea. The matter presents an interesting dynamic within patent law – ‘designing around’ patent claims – a practice often employed by generic manufacturers to circumvent potential challenges.
Despite the design alterations, the higher release schedule of doxycycline in the competing generic capsules compared to Oracea’s formulation led Bibas to deny claims of direct infringement and also infringement under the doctrine of equivalents. This case and its outcome emphasize the vital role that the credibility of expert opinion plays at trials.
In summation, the participation of appellate judges in patent cases overflows with potential benefits and insights. While this doesn’t promise an endorsement from the federal circuit when decisions are appealed, they indeed get a detailed understanding of the standing of the judges, as well as the credibility assigned to various experts in these cases.
Feel free to reach out with comments or questions to: gkroub@kskiplaw.com or via Twitter: @gkroub.