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Purdue Pharma L.P. v. Endo Pharms., Inc.

United States Court of Appeals for the Federal Circuit

February 1, 2006, Decided

04-1189, -1347, -1357

Opinion

 [***1768]   [*1125]  PLAGER, Senior Circuit Judge.

This is a patent case. It arose when Purdue Pharma L.P., The Purdue Frederick Company, The P.F. Laboratories, Inc., and The Purdue Pharma Company (collectively, "Purdue") filed an infringement suit against Endo Pharmaceuticals Inc. and Endo Pharmaceuticals Holdings Inc. (collectively, "Endo") in the United States District Court for the Southern District of New York. Plaintiffs alleged that Endo's proposed generic versions of OxyContin(R), Purdue's controlled release oxycodone product, would infringe three Purdue patents.

After a bench trial, the trial court found that Endo would infringe Purdue's patents, but determined that the patents were unenforceable [***1769]  due to inequitable conduct that occurred during prosecution before the United States Patent and Trademark  [*1126]  Office ("PTO"). 1 Purdue appealed the inequitable conduct judgment; Endo cross-appealed the infringement [**3]  judgment. On appeal, we initially affirmed the trial court's judgment that the patents were unenforceable due to the inequitable conduct by Purdue. 2 The cross-appeal was deemed moot.

On petition for rehearing, we have further examined the issues in the case. The trial judge had provided us with a thorough and complete opinion, explaining the case and his view of it. Our further examination suggested, nevertheless, that there were some issues that needed more development. In addition to fact-finding regarding materiality and intent, inequitable conduct requires a special kind of balancing, weighing the level of materiality against the weight of the evidence of intent.

Our further review has persuaded us that the trial judge may have erred in how he viewed certain of the evidence, and that this may have caused an error in the balancing step. Accordingly, we have withdrawn the earlier opinion and replaced it with this one. The judgment of inequitable conduct [**4]  is now vacated, and the matter is remanded to the trial court for further proceedings in accordance with this opinion. Since the ultimate issue of patent unenforceability remains open, it is necessary for us to address the cross-appeal on the infringement issue; we affirm the trial court's determination that Endo's product would infringe Purdue's patents.

BACKGROUND

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438 F.3d 1123 *; 2006 U.S. App. LEXIS 2887 **; 77 U.S.P.Q.2D (BNA) 1767 ***

PURDUE PHARMA L.P., THE PURDUE FREDERICK COMPANY, THE P.F. LABORATORIES, INC., and THE PURDUE PHARMA COMPANY, Plaintiffs/Counterclaim Defendants-Appellants, and EUROCELTIQUE S.A., Counterclaim Defendant, v. ENDO PHARMACEUTICALS INC., Defendant/Counterclaimant-Cross Appellant, and ENDO PHARMACEUTICALS HOLDINGS INC., Defendant-Cross Appellant.

Prior History:  [**1]  Appealed from: United States District Court for the Southern District of New York. Judge Sidney H. Stein.

Purdue Pharma L.P. v. Endo Pharms., Inc., 2004 U.S. Dist. LEXIS 10 (S.D.N.Y., Jan. 5, 2004)

Disposition: AFFIRMED-IN-PART, VACATED-IN-PART, and REMANDED.

CORE TERMS

patent, dosage, four-fold, oxycodone, trial court, discovery, infringement, pain, inequitable conduct, invention, patients, opioids, formulations, clinical, titration, written description, prior art, material information, unenforceable, fail to disclose, patents-in-suit, analgesics, deceive, trial court's finding, scientific proof, concentration, experimental, limitations, eight-fold, patentee

Business & Corporate Compliance, Defenses, Inequitable Conduct, Failure to Fulfill Duties, Patent Law, Burdens of Proof, Elements, Civil Procedure, Appeals, Standards of Review, Abuse of Discretion, General Overview, Clearly Erroneous Review, Effect, Materiality & Scienter, Jurisdiction & Review, Fact & Law Issues, Claims & Specifications, Claims, Claim Language, Elements & Limitations