Digest of Apotex Inc. V. UCB, Inc., No. 2013-1674 (Fed. Cir. Aug. 15, 2014) (precedential). On appeal from S.D. Fla. Before Reyna, Wallach, and Hughes

Procedural Posture: Patent holder, Apotex, appealed from a judgment that the patent is unenforceable due to inequitable conduct, Apotex is judicially estopped from asserting the patent by the accused products, the asserted claims are invalid for indefiniteness, Apotex disclaimed claim scope, and Apotex is barred by laches from recovering pre-suit damages. CAFC affirmed the finding of inequitable conduct.

  • Inequitable Conduct: During prosecution of the asserted patent directed to a process for making moexipril magnesium, the named inventor represented that Univasc, a product made according to a prior art patent, contained “‘unreacted but combined’ moexipril hydrochloride and magnesium oxide” to distinguish his claims from that patent. The inventor instructed his counsel to submit an expert declaration to show that a person of skill in the art would not expect his claimed reaction to occur, and relied on the Univasc product. The Examiner allowed the claims after adding a limitation that required more that 80% conversion of the moexipril or moexipril acid addition salt to moexipril magnesium. The District Court found that the inventor was aware that Univasc was made according to his claimed process, he concealed this knowledge from the PTO, and misrepresented the nature of Univasc and the prior art through his attorney’s arguments and the expert declaration. The District Court also found that the inventor withheld relevant prior art and submitted results of experiments he never conducted. The CAFC affirmed the finding of inequitable conduct, finding that the inventor’s conduct was “but-for material” to the patent’s issuance and that his deceptive intent was the single most reasonable inference that could be drawn from the evidence. The CAFC noted that this case came close to “the type of affirmative misconduct that in Therasense we held could justify finding inequitable conduct without showing but-for materiality.”