Wednesday, November 13, 2013

Schering Corp. v. Geneva Pharmaceuticals, Inc. case brief

Schering Corp. v. Geneva Pharmaceuticals, Inc. case brief summary
339 F.3d 1373 (2003)

Plaintiff patentee, the owner of patents on antihistamines (patents '233 and '716), sued defendant competitors for infringement under 35 U.S.C.S. § 271(e)(2)(A). The United States District Court for the District of New Jersey granted the competitors summary judgment and ruled that claims 1 and 3 of the '716 patent were invalid as anticipated by the '233 patent, which had expired. The patentee appealed.

The prior art '233 patent covered the antihistamine loratadine. Claims 1 and 3 of the '716 patent covered a metabolite of loratadine, descarboethoxyloratadine (DCL). The summary judgment evidence showed that DCL inevitably formed from loratadine in the human body. The competitors sought to market generic versions of loratadine once the '233 patent expired. The district court construed claims 1 and 3 of the '716 patent to cover DCL in all its forms, including forms metabolized within the human body. It found that while the '233 patent did not expressly disclose DCL and did not refer to metabolites of loratadine, the '233 patent anticipated claims 1 and 3 of the '716 patent under 35 U.S.C.S. § 102(b).


  • The appellate court agreed. That skilled artisans did not recognize that the prior art '233 patent inherently produced the claimed invention, DCL, was immaterial. 
  • A prior art reference showing administration of loratadine to a patient anticipated claims 1 and 3. 
  • As the record presented no data on humans to show that a genuine factual dispute existed about the formation of DCL after ingesting loratadine, there was no genuine issue of material fact precluding summary judgment.

The judgment was affirmed.

Suggested Study Aids and Books

No comments:

Post a Comment

The Evolution of Legal Marketing: From Billboards to Digital Leads Over the last couple of decades, the face of legal marketing has changed a l...