Case: 18-1036 Document: 96 Page: 1 Filed: 04/20/2021
`NOTE: This disposition is nonprecedential.
`United States Court of Appeals
`for the Federal Circuit
`Appeal from the United States District Court for the
`District of New Jersey in Nos. 2:14-cv-06414-CCC-MF,
`2:14-cv-07400-CCC-MF, 2:15-cv-05308-CCC-JBC, 2:15-cv-
`06225-CCC-JBC, Judge Claire C. Cecchi.
`Decided: April 20, 2021


`Case: 18-1036 Document: 96 Page: 2 Filed: 04/20/2021
`MARK CHRISTOPHER FLEMING, Wilmer Cutler Pickering
`Hale and Dorr LLP, Boston, MA, argued for plaintiff-appel-
`lant. Also represented by CHRISTINE DUH, Palo Alto, CA;
`JAYITA GUHANIYOGI, Foley & Lardner LLP, New York, NY;
`RIZZI, King & Spalding LLP, New York, NY.
` SCOTT A. CUNNING, II, Parker Poe Adams & Bernstein,
`LLP, Washington, DC, argued for defendants-appellees.
`MUSGROVE, Charlotte, NC.
` ______________________
`Before TARANTO, CHEN, and STOLL, Circuit Judges.
`CHEN, Circuit Judge.
`This appeal arises from several patent infringement
`actions filed by Sebela1 in the United States District Court
`for the District of New Jersey against Prinston2 and Ac-
`tavis.3 Sebela accused Prinston and Actavis of infringing
`claims of U.S. Patent Nos. 8,658,663 (’663 patent) and
`8,946,251 (’251 patent), both relating to methods of using
`paroxetine to treat thermoregulatory dysfunction associ-
`ated with menopause.4 Following a bench trial, the district
`court found claims 1, 2, and 5 of the ’663 patent and claims
`1 Sebela Ireland Limited’s (Sebela) predecessor in in-
`terest initiated these lawsuits.
`2 Prinston Pharmaceutical Inc., Solco Healthcare
`U.S., LLC, and Huahai US Inc. will be collectively referred
`to as Prinston.
`3 Actavis Laboratories FL, Inc., Actavis Pharma,
`Inc., Andrx Corp. (n/k/a Andrx LLC), and Actavis, Inc. will
`be collectively referred to as Actavis.
`4 Sebela also accused Prinston of infringing claims of
`U.S. Patent No. 7,598,271, not at issue in this appeal.


`Case: 18-1036 Document: 96 Page: 3 Filed: 04/20/2021
`1, 2, 4, 9, and 10 of the ’251 patent invalid as obvious. See
`In re Sebela Pat. Litig., No. 2:14-cv-06414-CCC-MF, 2017
`WL 3449054 (D.N.J. Aug. 11, 2017) (Opinion); J.A. 69–72
`(Final Judgment).
`Sebela’s appeal is unusual in that it does not challenge
`the district court’s invalidity holding based on obviousness
`grounds; it actually asks us to summarily affirm that deci-
`sion. Instead, Sebela’s objective is to ensure that any ad-
`verse alternative rulings made by the district court for
`those same patent claims as to utility and written descrip-
`tion carry no preclusive effect. Specifically, Sebela asks us
`to summarily affirm the district court’s unchallenged obvi-
`ousness ruling while at the same time making clear that
`we do not reach the district court’s findings as to written
`description and utility. In effect, Sebela’s theory for stand-
`ing to bring this appeal rests on its view that any alterna-
`tive invalidity holding based on written description or
`utility grounds has a substantial chance, under Third Cir-
`cuit law, of being given preclusive effect against Sebela’s
`related patent claims it has asserted in a separate patent
`infringement action regarding U.S. Patent No. 9,393,237
`(’237 patent). Prinston, for its part, has not declared that
`it will forgo any invocation of preclusion as to any written
`description and utility determinations by the district court
`here. Rather, it contends that Sebela lacks standing in this
`appeal because Sebela has not sought to overturn the dis-
`trict court’s judgment that the asserted claims are invalid
`(for obviousness) and issue preclusion concerns are an in-
`sufficient basis for standing to appeal.
`We need not address the correctness of Sebela’s stand-
`ing theory because it rests on an erroneous premise—that
`the district court made alternative invalidity holdings
`based on written description and utility grounds. While
`the district court briefly discussed those two potential in-
`validity grounds, it did so in an inconclusive, contingent
`manner that did not result in additional, alternative hold-
`ings to the obviousness ground for invalidity. Because


`Case: 18-1036 Document: 96 Page: 4 Filed: 04/20/2021
`Sebela’s only identified injury it seeks to undo in this ap-
`peal is based on a misreading of the district court’s deci-
`sion, we conclude Sebela lacks constitutional standing to
`bring this appeal. Accordingly, we dismiss.
`“Because the Constitution limits its grant of the judi-
`cial power to Cases or Controversies, U.S. Const., art. III,
`§ 2, any party that appeals to this court must have stand-
`ing under Article III before we can consider the merits of
`the case. . . . For a party to have standing, it must show (1)
`an injury in fact, (2) a causal connection between the injury
`and the conduct complained of, and (3) a likelihood that the
`injury will be redressed by a favorable decision.” See AVX
`Corp. v. Presidio Components, Inc., 923 F.3d 1357, 1361
`(Fed. Cir. 2019) (citing Lujan v. Defs. of Wildlife, 504 U.S.
`555, 560–61 (1992) (internal quotation marks omitted)).
`Critical to Sebela’s sole theory for appellate standing—its
`injury in fact—is its interpretation of the district court’s
`decision as having made alternative holdings of invalidity
`for the asserted claims: (1) obviousness; (2) lack of written
`description; and (3) lack of utility. That premise plays a
`crucial role in the understanding of preclusion law that un-
`dergirds Sebela’s assertion of a concrete interest in secur-
`ing the affirmance it seeks.
`On matters of preclusion law, we would follow Third
`Circuit law (or, of course, superseding Supreme Court pro-
`nouncements). Intellectual Ventures I LLC v. Capital One
`Fin. Corp., 937 F.3d 1359, 1370 (Fed. Cir. 2019), reh’g de-
`nied, 943 F.3d 1383 (Fed. Cir. 2019). Alternative holdings
`of a district court may have preclusive effect in the Third
`Circuit, which follows the Restatement (First) of Judg-
`ments § 68 cmt. n (1942). Jean Alexander Cosms., Inc. v.
`L’Oreal USA, Inc., 458 F.3d 244, 251, 253, 255 (3d Cir.
`2006) (“[W]e will follow the traditional view that inde-
`pendently sufficient alternative findings should be given


`Case: 18-1036 Document: 96 Page: 5 Filed: 04/20/2021
`preclusive effect.”). But there is good reason to think that,
`where alternative holdings are challenged on appeal and
`the appellate court does not reach them, preclusive effect
`would not be given to those holdings. One reason for that
`conclusion is Supreme Court authority. Jennings v. Ste-
`phens, 574 U.S. 271, 278 (2015) (“Whenever an appellee
`successfully defends a judgment on an alternative ground,
`he changes what would otherwise be the judgment’s issue-
`preclusive effects. Thereafter, issue preclusion no longer
`attaches to the ground on which the trial court decided the
`case, and instead attaches to the alternative ground on
`which the appellate court affirmed the judgment. Restate-
`ment (Second) of Judgments § 27 (1982).”). Another is that
`the First Restatement itself so provides. See First Restate-
`ment § 69, cmt. b; see also Hicks v. Quaker Oats Co., 662
`F.2d 1158, 1169 (5th Cir. 1981). Sebela asks us to affirm
`on obviousness, without our reaching Sebela’s challenges
`on appeal regarding written description and utility,
`thereby eliminating any preclusive effect of any alternative
`holdings on those issues.
`We read the district court’s opinion, however, as reach-
`ing only a single holding for invalidating the patent: obvi-
`ousness. Several aspects of the language and character of
`the Opinion channel us to this conclusion. First, unlike its
`highly detailed discussion of obviousness, Opinion, 2017
`WL 3449054 at *20–26, the district court only briefly dis-
`cussed utility and written description, id. at *26–29. Sec-
`ond, the district court’s final conclusion refers only to
`obviousness: “Prinston and Actavis have met their burden
`of proving clear and convincing evidence that the ’663 and
`’251 patents are invalid as obvious,” id. at *29 (emphasis
`Significant to our understanding of the district court’s
`decision is the way in which its brief utility and written
`description discussions are written and structured in a con-
`tingent, and not alternative, manner. When discussing


`Case: 18-1036 Document: 96 Page: 6 Filed: 04/20/2021
`utility, the district court noted: (1) “if [it] had found the
`method of treatment patents nonobvious, [it] would have
`concluded that the asserted claims are invalid for lack of
`credible utility,” id. at *27; (2) “were [it] to find the claimed
`methods are [nonobvious], it would instead find the patents
`invalid for lack of credible utility,” id. at *28; and (3) “while
`[it] has found the claimed methods are obvious, had it not,
`it would instead find the patents invalid for lack of credible
`utility,” id. Likewise, for written description, the district
`court stated that “[w]ere [it] to conclude that the patents
`are nonobvious, it would also conclude that the specifica-
`tion as it was filed does not reasonably convey to those
`skilled in the art that the inventor had possession of the
`claimed subject matter at that time,” id. at *29. This con-
`tingent and inconclusive language is distinct from the lan-
`guage typically used to signal an alternative holding
`because it depends on the district court finding the claims
`nonobvious. See, e.g., United States v. Wallace, 964 F.3d
`386, 390 (5th Cir. 2020), cert. denied, 141 S. Ct. 910, 208 L.
`Ed. 2d 460 (2020) (noting that alternative holdings are of-
`ten introduced with language such as “even if the em-
`ployee had produced evidence of an oral contract” or “even
`were there error that was plain” (emphases added)). As
`Prinston acknowledges, Oral Arg. at 27:33–27:45, a contin-
`gent finding does not amount to an alternative holding, and
`therefore could not have preclusive effect, see Jean Alexan-
`der, 458 F.3d at 255.
`The record also supports our understanding that the
`district court reached only a single ground of invalidity.
`When discussing the Opinion at the preliminary injunction
`hearing in the ’237 patent infringement suit, the district
`court asked the following: “But given the Court’s ruling
`which was on obviousness, on the basis of obviousness, can
`you respond in terms of your focus at this point on utility
`and written description?” J.A. 3574. This statement fur-
`ther confirms that the district court based its invalidity
`conclusion in the Opinion on obviousness alone and made


`Case: 18-1036 Document: 96 Page: 7 Filed: 04/20/2021
`only contingent findings, not alternative holdings, for util-
`ity and written description.
`Because we conclude that the Opinion provides only a
`35 U.S.C. § 103 holding of invalidity, which Sebela does not
`challenge on appeal, we must therefore dismiss this appeal
`for lack of constitutional standing.
`For the foregoing reasons, we conclude that Sebela
`lacks standing to appeal. The district court provided only
`a § 103 holding of invalidity, which Sebela does not contest.
`Therefore, we dismiss.

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