NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

NOVO NORDISK INC. AND

NOVO NORDISK A/S,

Plaintiffs-Appellants,

v.

PADDOCK LABORATORIES, INC.,

Defendant-Appellee.

______________________ 

2012-1031

______________________ 

Appeal from the United States District Court for the 

District of Minnesota in No. 10-CV-2199, Judge Donovan 

W. Frank.

______________________ 

Decided: June 18, 2013

______________________ 

MARK A. PERRY, Gibson, Dunn & Crutcher LLP, of 

Washington DC, argued for plaintiffs-appellants. With 

him on the brief were JOSH A. KREVITT, WAYNE BARSKY, 

and MICHAEL A. SITZMAN. Of counsel was LUCAS C.

TOWNSEND. 

DANIEL G. BROWN, Latham & Watkins LLP, of New 

York, New York, argued for defendant-appellee. With 
2 NOVO NORDISK A/S v. PADDOCK LABORATORIES, INC. 

him on the brief were GINA R. GENCARELLI and WILLIAM 

J. KATT. Of counsel was JEFFREY A. HOVDEN. 

______________________ 

Before NEWMAN, DYK, and PROST, Circuit Judges.

PROST, Circuit Judge. 

Novo Nordisk, Inc. and Novo Nordisk A/S (“Novo”) 

appeal from a judgment by the United States District 

Court for the District of Minnesota that claim 4 of its U.S. 

Patent No. 6,677,358 (“’358 patent”) is invalid as obvious 

and that the ’358 patent is unenforceable due to inequitable conduct. Novo Nordisk, Inc. v. Paddock Labs., Inc., 

797 F. Supp. 2d 926, 935 (D. Minn. 2011) (“Novo/Paddock”). 

This case is a companion case to Novo Nordisk A/S v. 

Caraco Pharmaceutical Laboratories, Ltd., No. 2011-1223

(Fed. Cir. June 18, 2013) (“Novo/Caraco”), decided contemporaneously herewith. That case involved a decision 

by the United States District Court for the Eastern District of Michigan, which ruled that claim 4 of the ’358 

patent was invalid as obvious and that the patent was 

unenforceable due to inequitable conduct. See id., slip op.

at 7-8. Today, we have affirmed the Michigan court’s 

obviousness decision but reversed its inequitable conduct 

decision. Id., slip op. at 24. 

The Minnesota court deciding the present case granted judgment on the pleadings in favor Paddock Laboratories, Inc. (“Paddock”), based upon the collateral estoppel 

effect of the Michigan court’s decision. Novo/Paddock, 

797 F. Supp. 2d at 935. Because we have reversed the 

inequitable conduct portion of the Michigan court’s decision, we likewise reverse the Minnesota court’s judgment

regarding Paddock’s inequitable conduct defense. 

Regarding invalidity, Novo asserts that reversal is 

warranted (notwithstanding the merits of the Michigan 
 NOVO NORDISK A/S v. PADDOCK LABORATORIES , INC . 3

court’s decision) because the Eighth Circuit recognizes an 

exception to the collateral estoppel doctrine when the law

controlling the issue is substantively changed following 

the original determination. See Ginters v. Frazier, 614 

F.3d 822, 827 (8th Cir. 2010) (recognizing that the Eighth 

Circuit embraces the “change in the law” exception to 

collateral estoppel). Novo contends that this exception 

applies here because, according to Novo, the law of obviousness was substantively changed by our holding in In re 

Cyclobenzaprine Hydrochloride Extended-Release Capsule 

Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012). 

As we explained in Novo/Caraco, the Cyclobenzaprine 

decision did not change the law of obviousness but instead 

simply “reaffirmed our longstanding precedent that it is 

error to find a claim obvious ‘before . . . consider[ing] the 

objective considerations,’ or to shift the burden of persuasion to the patentee at any point during its obviousness 

analysis.” Novo/Caraco, slip op. at 10-11 (quoting In re 

Cyclobenzaprine, 676 F.3d 1063 at 1075). And in any 

event, Cyclobenzaprine was a panel decision and so it 

could not have overruled prior obviousness law absent en 

banc or Supreme Court consideration. Newell Co. v. 

Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988). 

Therefore, the “change in law” exception does not apply 

and we affirm the Minnesota court’s judgment that claim 

4 of the ’358 patent was invalid as obvious based upon the 

collateral estoppel effect of the Michigan court’s decision. 

For the reasons set forth above, we affirm the Minnesota court’s judgment that claim 4 of the ’358 patent was 

invalid as obvious, but reverse its judgment that the ’358 

patent was unenforceable due to inequitable conduct. To 

the extent that any dispute remains concerning Paddock’s 

alleged infringement of claims 1, 2, 3, and 5 of the ’358 

patent, we remand for further consideration consistent 

with this decision. 
4 NOVO NORDISK A/S v. PADDOCK LABORATORIES, INC. 

AFFIRMED IN PART, REVERSED IN PART, AND 

REMANDED IN PART