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« Obviousness-type Double Patenting after Amgen v. F. Hoffmann-La Roche | Main | In re '318 Patent Infringement Litigation (Fed. Cir. 2009) »

September 28, 2009


A welcome outcome, but hardly surprising, given that Judges Newman and Rader were on the panel. At least their positions have been consistent over the years. What do you make of Judge Prost's position here versus her position in Aventis v Amphastar?


Nice article. But my question remains: what is the difference between Compound 24028 and Schmutz X? From the formulas in the case, these look to be structurally identical.

Dear Dan:

I think the difference illustrates the problem - inequitable conduct cases will always depend heavily on the facts and the "smell test" - does it look like something underhanded was done? And, of course, the panel - I suspect Judges Newman and Rader can be very persuasive that finding inequitable conduct should be rare, and particularly rare in cases where the district court doesn't think it exists, and even more rare when the district court grants summary judgment of no inequitable conduct.

But I agree it isn't a surprise. Thanks for the comment.

Dear EG:

There must have been a typo in the case, since you are correct, they are identical.

Thanks for noticing.


Thanks for confirming that what I saw isn't a figment of my imagination. If it is a typo, then I wonder which of the formulas for Compound 24028 and Schmutz X is correct.

I've got any even scarier thought: what if the formulas shown in the case are correct, i.e., Compound 24028 and Schmutz are the same. If they are correct/the same, then Teva/Sandoz has a real beef about why AstraZeneca represented that they had no data on Schmutz X.

We'll have to wait and see if the Federal Circuit issues a correction notice.

The point isn't that they didn't have data on 24028. The point was that Schmutz B was more similar to quetiapine than Schmutz X and that the existing compounds were unpredictable.

That said, maybe they should have presented all compounds and argued that the effects of "simple" substitutions were not predictable.

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