N OTE : This disposition is nonprecedential.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

______________________

M ARK A. P ERRY , Gibson, Dunn & Crutcher LLP, of Washington DC, argued for plaintiffs

- appellants. With him on the brief were J OSH A. K REVITT , W AYNE B ARSKY , and M ICHAEL A. S ITZMAN . Of counsel was L UCAS C. T OWNSEND

.

D ANIEL G. B ROWN , Latham & Watkins LLP, of New York, New York, argued for defendant

- appellee. WithNOVO NORDISK A / S v. PADDOCK LABORATORIES , INC

. 2

him on the brief were G INA R. G ENCARELLI and W ILLIAM J. K ATT . Of counsel was J EFFREY A. H OVDEN

.

______________________
Before N EWMAN , D YK , and P ROST , Circuit Judges.

P ROST , Circuit Judge

. N ovo 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 p atent is unenforceable due to inequit able 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. Jun e 18 , 2013) (“ Novo/Caraco ”) , decided co ntemporaneously herewith

. That case involved a decision by the United States District Court for the Eastern Di strict of Michigan

, which ruled that claim 4 of the ’358 patent was invalid as obv ious and that the patent was unenforceable due to inequitable conduct. See i d

. , 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 2 4

. T he Minnesota court deciding the present case gran ted judgment on the pleadings in favor Paddock Laborat ories, 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 in equitable conduct portion of the Michigan court’s dec ision, 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 MichiganNOVO 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 obv iousness was substantively changed by our holding in In re Cyclobenzaprine Hydrochloride Extended

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

A s we explained in Novo/Caraco , the Cyclobenzaprine decision did not change the law of obviousness but in stead simply “reaffirmed our longstanding precedent that it is error to find a claim obvious ‘before . . . consider[ing] the objective considera tions,’ or to shift the burden of persu asion to the patentee at any point d uring its obviousness analysis. ” Nov o/Caraco

, slip op. at 10

- 11 (quoting In re Cyclobenzaprine , 676 F.3d 1063 at 1075). And i n 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 o f the Michigan court’s decision

. For the reasons set forth above, we affirm the Minn esota 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

.NOVO NORDISK A / S v. PADDOCK LABORATORIES , INC

. 4 AFFIRMED IN PART, REVERSED IN PART , AND REMANDED IN PART