IP Hatch-Waxman Team Wins Patent Appeal on Behalf of Slayback Pharma

Wednesday, January 17, 2024

A little over a year after a rare mid-trial ruling in favor of client Slayback Pharma, the U.S. Court of Appeals for the Federal Circuit awarded the Windels Marx team of Connie Huttner and Jason Lief another victory in the dispute between Eagle Pharmaceuticals and Slayback. 

In September 2022, the trial team obtained a non-infringement ruling from Chief Judge Colm Connolly midway through the scheduled trial.  A month later, in late October of 2022, Chief Judge Connolly published an opinion further explaining the reasoning behind his ruling from the bench, and within days, patent-owner Eagle initiated appellate proceedings. Eagle’s appeal centered on various explanations as to why Chief Judge Connolly had misconstrued or misapplied the stipulated construction of the claim term “ready to use.”

In oral argument held on January 10, 2024, a three-judge panel of Judges Prost, Reyna, and Lourie from the U.S. Court of Appeals for the Federal Circuit heard arguments from counsel for Eagle, co-defendant Apotex, and Ms. Huttner.  Throughout the argument, the Federal Circuit seemed concerned that Eagle was asking the panel to replace Chief Judge Connolly’s factual findings with its own.

On January 16, 2024, the Federal Circuit affirmed the District Court’s ruling pursuant to Federal Circuit Rule 36 and taxed costs against Eagle.