US federal circuit weighs in on local patent rules

The US Court of Appeals for the Federal Circuit has limited a judge’s power to enforce local rules in a patent dispute involving pharmaceutical company Pfizer and an anti-cancer treatment company.

The court was ruling on a dispute referred from the US District Court for the Southern District of California.

In the case, AntiCancer was refused permission to amend one of its patent’s preliminary claims unless it agreed to pay Pfizer's $186,000 attorney fee bill.

But, on Monday (October 20), the federal circuit unanimously agreed that the decision was too harsh.

“We conclude that the district court exceeded its discretion in imposing the condition of payment of the defendants’ attorney fees and costs in order to permit AntiCancer to supplement its preliminary infringement contention,” the court wrote.

The dispute dates to 2011, when California-based AntiCancer sued Pfizer in an attempt to protect technology covering the use of a fluorescent protein to track the spread of cancer.

AntiCancer said Pfizer had access to its technology due to a contractual arrangement AntiCancer had with Wyeth Pharmaceuticals, a company that was later acquired by Pfizer.

When the claims were criticised by district judge Janis Sammartino, Pfizer filed for a summary judgment of non-infringement.

But, according to the federal circuit, after the complaint was filed AntiCancer found several publications authored by scientists at Pfizer and a company called Crown Bioscience.

AntiCancer claimed the publications proved that Pfizer had infringed its patents, and requested permission to amend the complaint and add Crown as a co-defendant.

But Sammartino said it could not amend its claim unless it paid Pfizer's costs of having brought the summary judgment motion, citing local patent rules for the court.

AntiCancer then appealed to the federal circuit to protest that the court’s local patent rules were too inflexible, especially when it came to a method being practised behind closed laboratory doors.

According to the court’s rules, parties are required to file allegations of infringement  two weeks after the first case management conference, to avoid cases becoming too complex. AntiCancer had tried to amend its complaint after this two-week period had elapsed.

The federal circuit said that for a district court to “exercise authority to levy a sanction” there had to be evidence of bad faith.

“There is no finding, and there is no basis for a finding of such impropriety here,” the court added.

The case will now return to the district court for further hearings.