Federal Circuit Affirms Inequitable Conduct Against Apotex

Apotex Inc. and Apotex Corp. (collectively, “Apotex”) appealed the decision of the United States District Court for the Southern District of Florida finding that Apotex’s U.S. Patent No. 6,767,556 (“the ’556 patent”) is unenforceable due to inequitable conduct. Apotex likewise appealed the district court determination that the asserted claims were indefinite, that they disclaimed coverage of the accused products from the scope of the ’556 patent’s claims, and any recovery of pre-suit damages was barred by laches. In an opinion authored by Judge Reyna (with Judges Wallach and Hughes joining), the United States Court of Appeals for the Federal Circuit determined that the district court did not abuse its discretion in finding inequitable conduct, and on that basis alone, affirmed the district court’s judgment. See Apotex, Inc. v. UCB, Inc. (August 15, 2014).

The ’556 patent is generally directed to a process for manufacturing moexipril tablets. Moexipril is an angio-tensin-converting enzyme (“ACE”) inhibitor used to treat hypertension. To improve stability, the ’556 patent discloses a process of making moexipril tablets consisting mostly of moexipril magnesium obtained by reacting moexipril, or its acid-addition salts, with an alkaline magnesium compound.

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08.19.14 | CAFC, Patent Issues, Patent Prosecution, posts | Gene Quinn

Supplemental Examinations to Consider, Reconsider, or Correct Patent-Related Information

The following article was sent in by Lisa A. Dolak , an Angela S. Cooney Professor of Law, Syracuse University College of Law and Practice Center Contributor.

A recent legislative proposal would authorize the U.S. Patent and Trademark Office (USPTO) to undertake a “supplemental examination” of an issued patent to “consider, reconsider, or correct information believed to be relevant to the patent.”  It would further bar the federal courts from holding a patent unenforceable “on the basis of conduct relating to information” considered during supplemental examination.

The obvious intent of the proposal is to constrain the federal courts’ power to entertain inequitable conduct-based challenges.  Its emergence is unsurprising, given the mounting dissatisfaction with the courts’ application of the inequitable conduct doctrine. However, because the bill proposes to provide patent owners a forum for effectively purging the taint associated with undisclosed or misrepresented information, it raises a number of questions, including questions relating to potential disciplinary consequences for practitioners. (more…)

01.3.11 | inequitable conduct, posts, prior art, Reexamination | Stefanie Levine