AstraZeneca Pharmaceuticals LP v. Teva Pharmaceuticals USA, Inc., 583 F.3d 766, CPLRG 0005 (Fed. Cir. 2009) astrazenecateva09252009
MAJOR ISSUES: inequitable conduct, no intent to deceive, disclosure of comparative data as requested by examiner to overcome obviousness rejection, failure to disclose internal data on other related compounds, failure to synthesize compounds for comparative testing
CROSS REFERENCES. On inequitable conduct, see Chisum Patent Law Digest § 4000; Chisum on Patents § 19.03. On prima facie obviousness of chemical compounds, see Chisum Patent Law Digest § 1563.30; Chisum on Patents § 5.04[6].
1. DRUG: QUIETIAPINE. A patent concerned “the antipsychotic drug quetiapine.” uspatno4879288 A district court correctly granted summary judgment against an inequitable conduct defense based on a patent owner’s failure to disclose its internal testing data on compounds related to a claimed compound. The patent owner disclosed internal data on two compounds in response to an examiner’s request for comparative testing data to overcome prima facie obviouosness. The patent owner also disclosed data on a third compound–but did not disclose data on other compounds. The patent owner “presented plausible reasons for its presentation of arguments and data during the prosecution.”
2. Also, under the circumstances, the patent owner was not obliged to synthesize a compound identified by the examiner for testing purposes. The patent owner disclosed another compound and stated that that compound was structurally closer to the claimed compound than the requested compound. The examiner did not dispute the patent owner’s position on closeness.
