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

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The Case

  • Abbot Laboratories (Plaintiff-Appellant) v. Geneva Pharmaceuticals (Defendant-Appellee)
  • Patentee brought suit for infringement of patent covering anhydrous crystalline form of terazosin hydrochloride
  • District Court (of N. Illinois) in summary judgment found one claim invalid under on-sale bar, patentee appealed
  • Court of Appeals held that third party’s sales prior to critical date, invalid patent (even though third party was unaware they were dealing with form claimed in patent)

The Patent

  • Terazosin hydrochloride – pharmaceutical compound used for the treatment of hypertension and benign prostatic hyperplasia
  • Abbott marketed it exclusively since 1987, sued Geneva after both companies filed an Abbreviated New Drug Application (ANDA) with the US Food and Drug Administration
  • Patent filed by Abbott on October 18, 1994
  • Undisputed that Byron Chemical Co. made at least three sales of terazosin hydrochloride in the US more than a year before filing date
    • sold in 1989-1990, and 1991, to Geneva
    • bought from a foreign company, but at the time of the sales, the parties to the United States transactions did not know the identity of the particular crystalline form with which they were dealing

The Ruling

  • Since the parties did not know that they were dealing with Form IV, Abbott reasons, they did not “conceive” the subject matter sold and therefore there was no “invention” on sale
  • We agree with defendants that claim 4 is invalid and that the parties' ignorance that they were dealing with Form IV is irrelevant
  • Abbott insists that there can be no on-sale bar unless conception of the invention has been proved, and that the lack of knowledge of the exact crystalline nature of the material that was sold precludes there having been a conception. We disagree that proof of conception was required

Class Notes

  • Abbott files for patent for anhydrous crystalline form of terazosin hydrochloride
  • Sued Geneva for infringement
  • Ruled that third party (before application) sold compound, making public use
    • Form IV in the compound that they bought, but no one knew Form IV was in it (until later)
  • Ultimately, invention was not valid due to on sale bar