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ABBOTT LAB. v. MYLAN PHARMACEUTICALS

United States District Court, Northern District of Illinois, Eastern Division


March 4, 1999

ABBOTT LABORATORIES, AN ILLINOIS CORPORATION, PLAINTIFF,
v.
MYLAN PHARMACEUTICALS, INC., A WEST VIRGINIA CORPORATION, DEFENDANT. ABBOTT LABORATORIES, AN ILLINOIS CORPORATION, PLAINTIFF, V. MYLAN PHARMACEUTICALS, INC., A WEST VIRGINIA CORPORATION, DEFENDANT.

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.

Background

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.

Collateral Estoppel

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 not.

Conclusion

For the foregoing reasons, Mylan's motion for summary judgment is granted. Abbott is collaterally estopped from asserting the validity of claim 4 of the '207 patent.


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