Filardi/Skadden win inequitable conduct case

Defendant Endo, represented by Ed Filardi of Skadden, prevailed in the case Purdue Faulding v. Endo, decided by the CAFC on June 7, 2005.

The patents in question pertained to oxycodone (OxyContin) and were 5,549,912 and a divisional and a cip (5,508,542) thereof. The '912 itself was a cip of another patent (5,266,331), not asserted in the case.

In evaluating materiality in inequitable conduct, the CAFC looks to Rule 56, citing Bruno, 394 F.3d 1348 (CAFC 2005).

One issue was that Purdue made assertions to the patent examiner that were not based on clinical evidence. Purdue argued it never said there was clinical evidence. It did, however, refer to these results as a "surprising discovery."

Separately, the CAFC rejected an argument made both by Purdue and by amicus Guilford that the court was requiring a pharmaceutical discovery to be supported by clinical results. The CAFC explained that both Purdue and Guilford had misunderstood the argument. The problem was not the failure to have clinical results; the problem was that Purdue indicated it had clinical results when it did not. The problem was a misrepresentation of what Purdue had; not that Purdue did not have clinical results. The CAFC noted a similarity to Hoffmann LaRoche, 323 F.3d at 1363.