Tuesday, November 22, 2005

Ranbaxy, Teva lose to Pfizer over Accupril

The CAFC affirmed DNJ on claim construction and on issuance of an injunction in Pfizer v. Ranbaxy.

On the issue of preliminary injunctions, the CAFC cited to Jeneric/Pentron v Dillon,
205 F.3d 1377 (CAFC 2000).

On claim construction, the CAFC cited Phillips v. AWH, 415 F.3d 1303. An issue was the interpretation of the meaning of the text

saccharides (i.e. sugars)

and the CAFC cited to Abbott Labs v. Novopharm, 323 F.3d 1324. The CAFC also noted that the specification negatively defined saccharides by what they are not.

Of some relevance to an earlier discussion about the use by Jan-Hendrik Schon and Lucent of the terms "methylene tribromide" and "methylene trihalide" in patent applications, one notes that the CAFC states in the Pfizer case that the relevant inquiry is what one of ordinary skill in the art thought of a given term as of the filing date of the application. One (misguided) patent attorney had argued that because bromoform was once, in the distant past, referred to as "methylene tribromide", that the misuse would be acceptable in the year 2002. The historical origin of a term is not the relevant inquiry; the meaning on the filing date is the proper inquiry. The use of terms "methylene tribromide" and "methylene trihalide" in the Lucent patent applications would have been a problem, but, of course, the applications were withdrawn as being based on fraudulent work.

A separate issue in the Pfizer case was the reliance by Ranbaxy on a (party) stipulated definition, which was rejected by the CAFC. One cannot rely on a stipulated definition. In a less discussed problem of reliance on a stipulation, parties in a different pharma case stipulated that the presence of a certain number of diffraction lines at certain d values proved that a given compound was the claimed compound, even though the claim in question enumerated about 34 lines. Because of that stipulation, the patentee did not provide evidence of matching of all 34 lines, and that failure caused the failure of the infringement case (even though the compound truly did infringe). Beware of the handling of stipulations on appeal!


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