Claims are found obvious and therefore invalid in Tramadol dispute
Purdue Pharma Products L.P., et al. v. Par Pharmaceutical, Inc., et al., Civil Action No. 07-255-KAJ, August 14, 2009.
Jordan, J. The Court entered its post-trial rulings in an ANDA case regarding a generic version of Ultram® ER.
After a five-day bench trial, the Court found that Par literally infringed certain claims of one of the patents-in-suit. However, the claims were obvious. Prior art disclosed remaining limitations or contains differences that would have been established as a part of the routine experimentation involved in incorporating tramadol as an active ingredient. Par was unsuccessful in its attempt to prove that Plaintiff’s employees and patent counsel engaged in inequitable conduct. The ruling may not be necessary as the issue is mooted by the finding of invalidity, but the Court rules for completeness and for making the Court’s opinion on this issue public. Par alleged four pieces of material art were not disclosed. The Court found the first three were not material, and as for the fourth, experiment results were material but properly disclosed. Over the objection that those results were untimely and “buried” them in the middle of a lengthy IDS. The Court noted the narrow middle ground between over-disclosure and under-disclosure with the specter of an inequitable conduct charge on either side.
