Wednesday, August 11, 2010

Mucinex case: what's an equivalent?

The bottom line in Adams v. Perrigno was a vacate and remand:

Adams Respiratory Therapeutics, Inc. (Adams) ap-
peals the judgment of the district court that the guaifene-
sin product described in Perrigo Co.’s (Perrigo’s)
Abbreviated New Drug Application (ANDA) would not
infringe the asserted claims of U.S. Patent No. 6,372,252
(the ’252 patent). Because the court based its judgment of
noninfringement on an erroneous claim construction, we
vacate and remand.

Text from the case:

We agree. Our case law does not contain a blanket
prohibition against comparing the accused product to a
commercial embodiment. In Zenith, the patent claimed a
crystalline product with a certain X-ray diffraction pat-
tern having 37 lines. The accused product was compared
to a commercial product that exhibited only 30 of the 37
lines. Thus, the comparison was insufficient to establish
infringement. As we later explained, “[i]n Zenith, the
patentee’s expert failed to verify that the reference sam-
ple exhibited all 37 lines of the x-ray diffraction pattern.
Thus, even assuming the comparison was correct, the
patentee failed to prove that all of the express limitations
of the claim were satisfied.” Glaxo Group, 153 F.3d at

The unspoken thing in the Zenith case was that the parties
had stipulated that there was a matching of all 37 powder XRD lines.
Normally, one does not have to "prove" that which is stipulated.


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