The opinion of the court was delivered by: Bucklo, District Judge.
MEMORANDUM OPINION AND ORDER
Plaintiff Abbott Laboratories ("Abbott") filed these two
actions*fn1 for patent infringement against defendant Mylan
Pharmaceuticals, Inc. ("Mylan") under 35 U.S.C. § 271(e)(2).
Mylan moves for summary judgment, arguing that claim 4 of the
patent is invalid.*fn2 For the reasons set forth below, the
motion is granted.
Since 1987, Abbott has sold terazosin hydrochloride, a drug
for the treatment of hypertension,*fn3 under the trademark
HYTRIN. In 1997, Mylan sought approval from the U.S. Food and
Drug Administration ("FDA") to market a generic version of
HYTRIN containing anhydrous terazosin hydrochloride.*fn4
Abbott claims the capsules Mylan seeks to market would infringe
claim 4 of its U.S. Patent No. 5,504,207 ("the `207 patent").
However, Mylan contends claim 4 is invalid and that its
capsules therefore would not infringe the '207 patent.
Claim 4, which claims a crystalline form of anhydrous
terazosin hydrochloride (called Form IV), has already been held
invalid. Abbott Lab. v. Geneva Pharm.,
Inc., Nos. 96 C 3331, 96 C 5868, 97 C 7587, 1998 WL 566884, at
*7 (N.D.Ill. Sept. 1, 1998) (Gottschall, J.) [hereinafter
Geneva]. The invention at issue, Form IV terazosin
hydrochloride, was found to be on sale more than one year
before Abbott filed its application for the '207 patent. Id.
Hence, claim 4 was held invalid under 35 U.S.C. § 102(b). Id.
A judgment of invalidity generally bars the patentee from
relitigating the issue. Blonder-Tongue Lab. v. University of
Illinois Found., 402 U.S. 313, 330-34, 350, 91 S.Ct. 1434, 28
L.Ed.2d 788 (1971); Mississippi Chem. Corp. v. Swift Agric.
Chemicals Corp., 717 F.2d 1374, 1376 (Fed. Cir. 1983). Unless
the patentee can show she did not have a fair opportunity
procedurally, substantively and evidentially to pursue her
claim the first time, she is collaterally estopped from
relitigating the validity question. Blonder-Tongue, 402 U.S. at
333, 91 S.Ct. 1434; Mississippi Chem., 717 F.2d at 1376, 1379.
There is nothing here to indicate Abbott did not have such a
full and fair chance to litigate its claim in Geneva.*fn5 See
Blonder-Tongue, 402 U.S. at 333, 91 S.Ct. 1434.
Accordingly, Mylan's motion for summary judgment is granted.
There is no genuine issue of material fact as to the invalidity
of claim 4 of the '207 patent, Fed.R.Civ.P. 56(c); Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91
L.Ed.2d 202 (1986), and therefore no genuine issue as to
whether Mylan's proposed product infringes that claim. It does
For the foregoing reasons, Mylan's motion for summary
judgment is granted. Abbott is collaterally estopped from
asserting the ...