Look BEFORE You Leap II

It is a “century-old axiom of patent law … that a product which would literally infringe if later in time anticipates if earlier.” Some patentees overlook this axiom – to their everlasting regret. (Teva Pharmaceutical Industries Ltd. v. AstraZeneca Pharmaceuticals LP et al.)

Teva sued AstraZeneca, claiming that its drug, Crestor, infringed a Teva patent. (For those readers who don’t pay attention to television commercials, we will note that Crestor is used to treat high cholesterol.) AstraZeneca responded to the suit by seeking a summary judgment that the patent-in-suit was invalid.

For purposes of the motion, AstraZeneca admitted that its product infringed the patent, meaning that the product satisfied each and every limitation of the asserted patent claims. AstraZeneca then proceeded to allege that it had invented Crestor BEFORE Teva had created the invention covered by the patent-in-suit. “A patent will be invalid for prior invention under §102(g)(2) if another inventor … reduced the invention to practice first … provided that the prior inventor did not abandon, suppress, or conceal the invention.” As anyone with a television can attest, AstraZeneca has done anything BUT “abandon, suppress, or conceal” Crestor.

In support of its allegations, AstraZeneca produced mountains of uncontroverted documentary and testamentary evidence that it had been producing pilot batches of Crestor well before the date of invention claimed by Teva. In a last ditch effort to save its patent, Teva argued that this did not prove prior invention by AstraZeneca, “because there is no evidence that AstraZeneca has ever appreciated” critical aspects of how the patented formulation promoted chemical stability of the product, “AstraZeneca’s failure to appreciate the stabilizing effect … (even though [this component] was included in its Crestor formulations) is fatal to its claim of prior invention.”

Not so, said the Court. “A prior inventor need not always have appreciated every feature recited in a patent claim in order to have conceived of or reduced to practice the claimed invention. AstraZeneca … appreciated that its creation possessed the relevant inventive feature – stability – even if its understanding of how its creation achieved stability was incorrect. The discovery of an inherent property [,stability,] does not make the pharmaceutical compositions claimed by Teva – which AstraZeneca undisputedly made first – new.”

THE LESSON TO BE LEARNED: Look before you leap; before you sue, make sure your invention predates the alleged infringing product.