Hybritech Inc. v. Abbott Laboratories

• Decision Date: 17 June 1988
• Docket Number: No. 87-1467,87-1467
• Citation: 849 F.2d 1446,7 USPQ2d 1191
• Parties: HYBRITECH INCORPORATED, Plaintiff-Appellee, v. ABBOTT LABORATORIES, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1446

849 F.2d 1446

7 U.S.P.Q.2d 1191

HYBRITECH INCORPORATED, Plaintiff-Appellee, v. ABBOTT LABORATORIES, Defendant-Appellant.

No. 87-1467.

United States Court of Appeals, Federal Circuit.

June 17, 1988.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., argued for plaintiff-appellee. With him on the brief were Charles E. Lipsey and Thomas H. Jenkins.

C. Lee Cook, Jr., Chadwell, Kayser, Ltd., Chicago, Ill., argued for defendant-appellant. With him on the brief were Richard S. Rhodes, Robert F. Ward and Lynn P. Hagman. Also on the brief were Jeffrey L. Weinberger and Steven M. Perry, Munger, Tolles & Olson, of Los Angeles, Cal., Mark E. Barmak, Dennis K. Shelton and Edward L. Michael, Abbott Laboratories, North Chicago, Ill.

Before DAVIS ^* and SMITH, Circuit Judges, and BALDWIN, Senior Circuit Judge.

EDWARD S. SMITH, Circuit Judge.

In this patent case, the United States District Court for the Central District of California issued a preliminary injunction order enjoining Abbott Laboratories (Abbott) from manufacturing, using, or selling monoclonal antibody sandwich assays that infringe claims of Hybritech Inc.'s (Hybritech) United States Patent No. 4,376,110 ('110 patent). ¹ This injunction was stayed by the district court pending Abbott's appeal to this court. We affirm.

I. Issue

The sole question on appeal is whether the district court abused its discretion in preliminarily enjoining Abbott from continuing to infringe the '110 patent.

II. Background

Hybritech, since 1979, has been in the business of developing diagnostic test kits employing monoclonal antibodies that detect various antigens. By detecting specific antigens, a broad range of conditions such as pregnancy, cancer, growth hormone deficiency, or hepatitis can be identified. Hybritech is the assignee of the '110 patent, which patent issued March 8, 1983. The '110 patent relates to "Immunometric Assays Using Monoclonal Antibodies" and sets forth claims defining a variety of sandwich assays using monoclonal antibodies.

The '110 patent has been the subject of prior litigation before this court in Hybritech Inc. v. Monoclonal Antibodies, Inc.

                (MAB ). 2  In that proceeding, Hybritech, alleging that the manufacture and sale of Monoclonal Antibodies, Inc.'s (Monoclonal) diagnostic test kits infringed claims of the '110 patent, on March 2, 1984, brought action in district court against Monoclonal seeking both monetary and injunctive relief. 3   The United States District Court for the Northern District of California concluded that the claimed subject matter of the '110 patent was anticipated under 35 U.S.C. Sec. 102(g).  The district court, in that case, also held the claims of the '110 patent invalid for obviousness under 35 U.S.C. Sec. 103.  In addition, the district court also invalidated the patent on various grounds based on 35 U.S.C. Sec. 112, first and second paragraphs.  On appeal to this court, we reversed in all respects the judgment of the district court holding the claims of the '110 patent invalid
                

Subsequent to receiving favorable results on appeal to this court in its litigation with Monoclonal, Hybritech on November 14, 1986, brought a patent infringement action against Abbott seeking both monetary and injunctive relief on grounds that Abbott manufactured and sold diagnostic test kits that infringed claims of the '110 patent. Abbott responded to Hybritech's complaint by filing a counterclaim seeking a declaratory judgment that claims of the '110 patent were invalid and not infringed by Abbott.

With respect to Hybritech's request for a preliminary injunction, the parties conducted limited discovery and submitted memoranda and appendices to the district court. After briefing on the motion was complete but before the district court rendered a decision on the motion, the United States Patent and Trademark Office, on April 8, 1987, declared an interference as to the '110 patent among Hybritech and La Jolla Research Foundation, both junior parties, and Hoffmann-LaRoche, Inc., the senior party. Abbott filed a motion for a stay of the district court action pending the outcome of the interference proceeding; however, this motion was denied by the district court.

On April 23-24, 1987, the district court heard oral argument on the preliminary injunction motion and, at the conclusion of the hearing, the district court rendered an oral ruling, including both oral findings of facts and conclusions of law, that Hybritech's motion for a preliminary injunction should be granted. At this time, the district court expressed its intent to put its oral findings and conclusions into writing. On June 12, 1987, the district court formally entered the injunctive order. In addition to entering the injunction order, the district court granted Abbott's motion to stay the preliminary injunction pending the outcome of this appeal. Abbott, on July 10, 1987, filed its notice of appeal on the injunctive order with this court. On July 14, 1987, the district court entered its written findings of facts and conclusions of law based on its prior oral findings of facts and conclusions of law issued April 24th.

III. Analysis

Our review of a district court's grant of a preliminary injunction pursuant to 35 U.S.C. Sec. 283 is limited to determining whether, in granting the preliminary injunction, the district court abused its discretion, committed an error of law, or seriously misjudged the evidence. ⁴ Applying this standard of review to the proceeding before us, we cannot conclude, as urged by Abbott, that the district court abused its discretion by granting Hybritech's motion for a preliminary injunction.

At the threshold in reaching Abbott's arguments on the merits, we address the procedural issue raised by Abbott whether, for purposes of our review, the district court's oral ruling, issued April 24 Here, the district court made perfectly clear its intent that the oral findings of facts and conclusions of law did not constitute the district court's formal findings and conclusions. ⁸ Rather, the district court issued oral findings and conclusions for convenience of both the parties and this court. ⁹ Any changes and additions appearing in the written findings and conclusions were made both for the sake of clarity and to address points that were considered by the district court in reaching its decision but were not articulated at the time the district court delivered its oral opinion. We must conclude that the reduction of the oral ruling into written findings and conclusions aids our review, and, on this basis, that the Ninth Circuit would hold, if faced with the circumstances of this case, that Abbott's filing of its notice of appeal did not divest the district court of jurisdiction to subsequently enter its written findings of facts and conclusions of law.

                1987, or written findings and conclusions, issued July 14, 1987, provides the basis for this appeal.  The resolution of this procedural issue, which issue is not unique to patent law, requires us to turn to the law of the Ninth Circuit, which circuit is the particular regional circuit court where appeals from the district court in this case normally would lie. 5   Ninth Circuit law follows the general rule that a party's filing a notice of appeal to a circuit court divests the district court of jurisdiction over the matters appealed. 6   However, the Ninth Circuit recognizes that this general rule does have exceptions, e.g., where the district court action aids the court of appeals in its review. 7
                

Abbott, relying on Chemlawn Services Corp. v. GNC Pumps, Inc., ¹⁰ contends that, where the district court's written findings of facts and conclusions of law alter, or differ from, its oral findings and conclusions, the district court's oral findings and conclusions must provide the basis for this appeal. We disagree.

Chemlawn Services involved a situation wherein the district court failed to issue any findings of facts or conclusions of law, either oral or written, with its preliminary injunction as required by Rule 52(a) of the Federal Rules of Civil Procedure. Rather, the district court in that case waited approximately 5 months after its grant from the bench of the preliminary injunction to enter any findings of facts and conclusions of law. On that basis, we held in Chemlawn Services that the district court's attempt to cure this error by belatedly entering findings of facts and conclusions of law after the defendant had already filed the notice of appeal was ineffective. ¹¹ In contrast, here, the district court, at the time it issued the injunction, not only made oral findings of facts and conclusions of law, but the district court expressly stated that these oral findings and conclusions would be reduced to writing. Accordingly, we conclude that Chemlawn Services simply does not control in this case.

We, however, cannot condone, in all cases, the procedure followed by the district court judge in this case. It is our view that a district court should refrain from entering an appealable order until the findings of facts and conclusions of law Turning to the merits, to obtain a preliminary injunction, pursuant to 35 U.S.C. Sec. 283, a party must establish a right thereto in light of four factors: (1) reasonable likelihood of success on the merits; (2) irreparable harm; (3) the balance of hardships tipping in its favor; and (4) the impact of the injunction on the public interest. ¹²

upon which the district court intends the losing party to base any appeal also are entered. Although under Ninth Circuit law, which controls our resolution of this issue, the district court, in the circumstances of this case, was not precluded from entering its written findings and conclusions after Abbott filed its notice of appeal, we observe that the entry of such an order without the findings and conclusions upon which the district court intended any appellate review be based can lead...