Fed. Cir. (2009)
Fitzpatrick Obtains Reversal of Noninfringement of Sanofi-Aventis and Debiopharm Patent Covering Eloxatin®
Following expedited briefing and oral argument, on September 10, 2009, the Federal Circuit reversed the District Court’s June 18 decision that the generic defendants did not infringe Sanofi’s and Debiopharm’s patent covering the active ingredient of the anti-cancer drug Eloxatin®.
Multiple generic defendants successfully argued to the District Court that the compound claims of the patent in suit reciting optically pure oxaliplatin should be limited in scope to oxaliplatin made by the HPLC process disclosed in the patent’s specification. Plaintiffs argued that HPLC was not required by the specification or the file history, and the inventors had not disclaimed the use of other methods to make their claimed compound.
The Federal Circuit agreed with Plaintiffs stating that the claims were to a compound, not a process, and the inventors had not limited their claims to oxaliplatin made using the HPLC method disclosed in the specification. The Federal Circuit vacated the decision and remanded the case.
The appeal was handled by Fitzpatrick partners Dominick A. Conde, William E. Solander, and Nina Shreve.