Amgen v. ITC and Roche Diagnostics (Fed. Cir. 2009).
Issues: FDA Safe Harbor; Joint Interpretation of Patent and Tariff Act; ITC Jurisdiction
Section 271(e)(1) of the Patent Act excuses would-be infringing uses of a patented invention that “reasonably relate to the development and submission of information under a Federal Rule which regulates the manufacture, use, or sale of drugs or veterinary biological products.” The language of the provision is that those activities will not be considered “act[s] of infringement.” In its 2005 Merck decision, the Supreme Court indicated a policy preference for broadly interpreting the exception in order to encourage drug development and FDA approval. Patent cases at the International Trade Commission (ITC) do not derive their authority from the Patent Act. Rather Section 337 of the Tariff Act (19 USC § 1337) authorizes the ITC to halt imports of articles that either (i) “infringe a valid and enforceable US patent” … or (ii) are made … by means of, a process covered by the claims of a valid and enforceable US patent.”
The distinction came to light in Kinik (Fed. Cir. 2004). In that case, the Federal Circuit distinguished between the Patent Act and the Tariff Act with regard to importation of a product made by a patented process. Section 271(g) of the patent act includes the caveat such importation is not infringement if the product is “materially changed by subsequent processes.” The court held that caveat did not apply to ITC cases based on the differences in the statutes and the explicit limitation in the Patent Act that the 271(g)(1) caveat applied “for the purposes of this title.”
In Amgen, Roche hoped to claim immunity under Section 271(e)(1) for its research use of imported EPO. Thus, when the Amgen case arose, the Federal Circuit was forced to decide between the statutory distinctions highlighted in Kinik and the Supreme Court’s broad reading of the 271(e)(1) defense. In their 2008 decision, the appellate panel (led by Judge Newman) held that the 271(e)(1) safeharbor applies to the ITC action.
Following the 2008 decision, Amgen petitioned for a rehearing en banc. After some apparent inter-chamber negotiations, the court sitting en banc has vacated the 2008 decision and the original panel has issued a revised opinion. The new opinion again confirms that the 271(e)(1) defense applies to ITC actions. Instead, the new opinion removes all discussion of whether the ITC has jurisdiction over non-sales based “imminent importations” except to note that resolution of that dispute was “not necessary … to decide this case.” (Here, Amgen’s allegations that Roche had imported IPO was sufficient to create subject matter jurisdiction.)
“In this case, the Commission had jurisdiction as a result of Amgen’s allegation that Roche imported an article made by a process covered by the claims of a valid and enforceable United States patent. See 19 U.S.C. § 1337(a)(1)(B)(ii). The Commission therefore was correct to reach the merits of Amgen’s claim. We need not and do not address whether the Commission would have had jurisdiction if Amgen had not asserted actual importation and relied instead entirely on its “imminent importation” theory.”
The ITC previously held that it did not have jurisdiction without an “importation, sale for importation, or sale within the US after importation.”
On remand, the ITC must determine “whether all of the EPO that Roche imported was entitled to the protection of the safe harbor.”
Judge Linn’s dissent remains unchanged. He argues that the plain language of 271(e)(1) cannot be read to extend to excuse imports of products made by patented process since that activity is not defined as “infringe[ment]” under Section 337.