By Donald Zuhn --
Last month, the Federal Circuit affirmed a District Court's finding on summary judgment that Merck & Co., Inc. had not obtained favorable rulings in two prior proceedings by fraud. The prior proceedings included an infringement suit involving U.S. Patent Nos. 5,573,780 (the '780 patent) and 5,690,962 (the '962 patent) owned by Apotex Corp., and Apotex' appeal of that decision to the Federal Circuit.
In 1996, Apotex had filed suit against Merck (Apotex I), contending that Merck's process of formulating and producing enalapril tablets (under the brand name Vasotec®) infringed the '780 and '962 patents. The District Court, however, determined that Merck had invented the claimed process before Apotex had made the invention, and therefore, found Apotex' patents invalid under 35 U.S.C. § 102(g). In 2001, the Federal Circuit affirmed the District Court's finding (Apotex II).
In Apotex I and Apotex II, Apotex argued that Merck had suppressed or concealed its practice of the claimed invention, and therefore, that even if Merck had practiced the claimed process before Apotex, Merck's practice of the claimed process infringed Apotex' patents. In Apotex I, the District Court rejected Apotex' argument, finding that Merck had not suppressed or concealed the invention because it had widely distributed a list of ingredients for its enalapril tablets and because a Merck executive had narrated a videotape describing the Merck process during a Canadian trial in 1991. In Apotex II, the Federal Circuit affirmed, determining that the narration of the Merck process in the Canadian trial constituted a public disclosure of the process.
Following the unfavorable decisions in Apotex I and Apotex II, Apotex returned to the District Court (Apotex III), asserting that Merck had obtained favorable rulings in the two prior proceedings by fraud. In particular, Apotex contended that Merck had misrepresented facts and made false statements in its summary judgment and appellate briefs (the alleged misrepresentations and false statements were primarily related to Merck's ingredient list and narration of its process in the Canadian trial). According to Apotex, Merck had admitted that it had made false statements when one of its key witnesses gave contradictory testimony in 2004 in a different case involving a related compound, quinapril.
In Apotex III, the District Court again ruled against Apotex, finding that the 2004 testimony involved manufacturing details not disclosed or claimed in Apotex' patents, and further, that many of the allegedly false statements constituted only attorney argument, rather than evidence or testimony. The Federal Circuit again affirmed, finding that the District Court had correctly ruled that the evidence and argument adduced and presented at trial did not establish fraud.
Apotex Corp. v. Merck & Co., Inc. (Fed. Cir. 2007)
Panel: Circuit Judges Newman, Rader, and Prost
Opinion by Circuit Judge NewmanAdditional information regarding this case can be found at Patently-O.
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