Watson wins appeal at CAFC in Merck case; D. Delaware reversed as to on-sale bar analysis
Watson Laboratories, Inc. (“Watson”) appeals the final judgment of the United States District Court for the District of Delaware holding that claim 4 of U.S. Patent No. 6,441,168 (the “’168 patent”) is not invalid under the on-sale bar of 35 U.S.C. § 102(b) (2006).1 See Merck & Cie v. Watson Labs., Inc., 125 F. Supp. 3d 503 (D. Del. 2015) (“District Court Decision”). For the reasons discussed below, we reverse
The claim in question was to a composition:
“A crystalline calcium salt of 5-methyl-(6S)-tetrahydrofolic acid with 2 theta values of 6.5, 13.3, 16.8 and 20.1 (Type I) said crystalline salt having a water of crystallization of at least one equivalent per equivalent of 5-methyltetrahydrofolic acid.”
As to contract law, and evidence:
A similar analysis applies here. Although Buchholz testified that Merck would not have sold MTHF to Weider without first resolving certain safety and liability issues, J.A. 1291–95, his post hoc testimony cannot override what was “abundantly plain from the price, quantity, and delivery terms,” Cargill, 476 F.3d at 1370, on the face of Martin’s September 9, 1998, fax. Simply put, Buchholz’s testimony—which he gave in May 2015 about events occurring nearly seventeen years before—does not supersede the contemporaneous documentary evidence. See Linear Tech., 275 F.3d at 1053 (explaining that under “general principle[s] of contract law . . . the parties’ objective, expressed intent—not their secret, subjective intent—controls whether a bargain has been struck”); Sinskey v. Pharmacia Ophthalmics, Inc., 982 F.2d 496, 498–99 (Fed. Cir. 1992) (concluding that an inventor’s affidavit regarding events occurring many years before was entitled to little weight in the on-sale bar analysis).