Apotex Usa, Inc. v. Merck & Co., Inc.

254 F.3d 1031 (2001)

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Nature of the Case

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Facts

P is the assignee of the '780 and '962 patents, which relate to a process for making a stable solid formulation of enalapril sodium for use in the treatment of high blood pressure. D manufactures enalapril sodium under the trade name VASOTEC (R) and has been continuously manufacturing and commercially selling VASOTEC (R) tablets since 1983. D owns both U.S. and Canadian patents covering the enalapril sodium compound but does not own a patent covering its process of manufacturing VASOTEC (R). In 1992, D disclosed the ingredients utilized in its VASOTEC (R) manufacturing process in a Canadian product monograph, and more than 30,000 copies of the monograph were distributed in 1993 alone. D also disclosed the ingredients used in manufacturing RENITEC (R) (the trademark used for its enalapril sodium product sold in various foreign countries) in the 1988 edition of the Dictionnaire Vidal, a French pharmaceutical dictionary. In 1991, D sued Px's Canadian affiliate for infringement of D's Canadian patent covering the enalapril sodium compound. During the 1994 trial D performed a step-by-step narration of a videotape demonstrating D's process of manufacturing VASOTEC (R). Within days of hearing this testimony, Dr. Bernard Sherman, a P official, allegedly conceived the patented process at issue. P filed the present action D, alleging that d's process of manufacturing VASOTEC (R) infringes all of the claims of both the '780 and '962 patents. Both parties filed cross-motions for summary judgment on the issue of infringement, and D cross-moved for summary judgment of invalidity under §102(g). The court granted P's motion for summary judgment of infringement, but also granted D's cross-motion for summary judgment of invalidity because it found that D invented the process claimed in the '780 and '962 patents within the United States before P, and did not abandon, suppress, or conceal that invention within the meaning of § 102(g). P appealed.