December 2010

Spotlight Info

In Cancer Research Technology Ltd. v. Barr Laboratories., Inc., No. 10-1204 (Fed. Cir. Nov. 9, 2010), the Federal Circuit reversed, inter alia, the district court’s decision of inequitable conduct.  Cancer Research Technology Limited’s (“Cancer Research”) patent claims a genus of tetrazine derivative compounds and methods for treating cancer by administering those compounds.  During a prolonged prosecution, the PTO rejected the application eight times and each time, the applicant responded by filing a continuation before the patent issued.  During the intervening period, Cancer Research continued to study tetrazine derivatives, revealing that several of the compounds were toxic and had little anti-cancer activity.  Cancer Research published these results in scientific journals, but neither submitted these findings to the PTO nor amended their claims.  After Barr Laboratories, Inc. (“Barr”) filed an ANDA, Cancer Research sued Barr for patent infringement.  In its finding of inequitable conduct, the district court established materiality and inferred intent because the inventors published their findings that some of the compounds lacked cancer utility, but failed to report this data to the PTO.  The Federal Circuit, however, held that a court may not rely solely on its materiality finding to infer intent to deceive; rather, additional evidence is necessary from which to deduce intent.  See the full summary in this issue.