Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)

Read for 3/2/11

Reading Notes

• Patentee brought action alleging infringement of a patent for anhydrous crystalline form of terazosin hydrochloride
• District Court held one claim invalid under "on sale" bar and patentee appealed
  • CoA held that third party's sales prior to critical date rendered patent invalid even though third party did not know they were dealing the the particular form claimed in the patent
  • CAFC affirms this ruling
• Abbott appealed summary judgment holding 4 of its claims invalid under 102
  • CAFC holds that summary judgment was properly granted
• TH exists in four anhydrous forms and claim 4 of the patent specifies Form IV
• Three companies filed an ANDA at the USFDA seeking approval to market a generic version of Hytrin (Abbott's long-time tablet)
  • All raised patent invalidity under the on-sale bar because it was sold in the U.S. for more than one year before filing date (10/18/94)
• Undisputed that another party sold the Form IV more than one year proir
  • Bought from two foreign manufacturers
  • None specified which form was being sold
  • No one involved know which form til after Abbott and Geneva tested them
• Ruled that Form IV had been used in the public domain, was relied upon as freely available, and it was irrelevant that the parties were unaware of the nature of that form
  • Abbot claims for an "invetion" to be on sale the parties must know precisely the nature of the subject matter with which they are dealing
  • Defendants say it is only necessary to apply the two-part test from Pfaff
• Clearly meets the Pfaff test
• Abbott cites cases where the accidental production does not constitute anticipation
  • Do not count because non of those had a useful or appreciated result as this one did
• Affirm the summary judgment of invalidity

Statutory Bars

• Immaterial that involved parties do not know the exact nature of the product with regards to on-sale bar
• Summary judgment granted when it is purely a matter of law, not fact
  • Defendants bore the burden of proving the existence of the on-sale bar
• Two-part Pfaff test
  • Invention must be both the subject of a commercial sale or offer for sale and be "ready for patenting"
• No exceptions for sales made by third parties innocently or fraudulently
• The purpose of the on-sale bar is to prohibit the withdrawal of inventions that were already in the public domain