Wednesday, November 13, 2013

Apotex USA, Inc. v. Merck & Co., Inc. case brief

Apotex USA, Inc. v. Merck & Co., Inc. case brief summary
254 F.3d 1031 (2001)

Plaintiff appealed from a decision of the United States District Court for the Northern District of Illinois granting defendant's motion for summary judgment and holding that plaintiff's U.S. Patents Nos. 5,573,780 ( 780 patent) and 5,690,962 ( 962 patent) were invalid under 35 U.S.C.S. § 102(g).

Plaintiff filed suit alleging that defendant's process of manufacturing its high blood pressure medicine infringed both the '780 and '962 patents. The district court granted plaintiff's motion for summary judgment of infringement, but also granted defendant's cross-motion for summary judgment of invalidity because it found that defendant invented the process claimed in the '780 and '962 patents within the U.S. before plaintiff, and did not abandon, suppress, or conceal that invention within the meaning of 35 U.S.C.S. § 102(g).

The sole issue on appeal was whether defendant "suppressed" or "concealed" the patented process within the meaning of § 102(g).


  • The appellate court noted that defendant took no steps to make the invention publicly known for nearly five years and that such a delay raised an inference that defendant suppressed or concealed its invention. 
  • However, the court reasoned that as long as defendant "resumed activity" (i.e., made the benefits of its invention known to the public) before plaintiff's entry into the field, it could not be deemed to have suppressed or concealed the invention within the meaning of § 102(g).


The district court's decision was affirmed because defendant did not abandon its invention where its public disclosures combined with plaintiff's admissions proved that defendant made the knowledge of its invention available to the public, thereby rebutting plaintiff's evidence of suppression.

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