safe and effective. But that kind of free riding the law permits, and indeed the Hatch-Waxman Act encourages. Moreover, free riding is an integral part of the scheme of the patent law. In exchange for the exclusive and in the case of Paxil very valuable rights that a valid patent grants, the patentee is required to make public disclosure of the steps required to create the patented product, so that when the patent expires and the patented product enters the public domain competitors can manufacture the product. Those competitors are free riders with a vengeance. But they are lawful free riders. And so is Apotex.
I construe claim 1 of SmithKline's patent 723 to cover crystalline paroxetine hydrochloride hemihydrate in any commercially significant quantity, and so construed the claim is valid against the various attacks on it made by Apotex but clearly will not be infringed by Apotex's anhydrate product. I hold that if claim 1 is construed to claim single crystals of crystalline paroxetine hydrochloride hemihydrate, it is infringed, but that if the claim were so construed it would be invalid because of indefiniteness.
If claim 1 is construed to claim crystalline paroxetine hydrochloride hemihydrate in amounts detectable by means that existed when the patent was applied for or issued, I find that SmithKline has failed to prove by a preponderance of the evidence that Apotex's product will infringe claim 1.
I reach the same conclusion (though with less confidence) if claim 1 is construed to claim crystalline paroxetine hydrochloride hemihydrate in amounts detectable by any means. So construed, the claim might fail for indefiniteness, but I do not reach that question.
If contrary to the above, claim 1 is valid and will be infringed either by a single crystal of hemihydrate or by a barely detectable amount of it, Apotex has a complete affirmative defense that SmithKline is the cause of the infringement.
If claim 1 is valid and will be infringed and Apotex has no defense to liability, I hold that SmithKline nevertheless is entitled to no relief: neither an injunction against Apotex's making its anhydrate product nor an order based on the Hatch-Waxman Act delaying Apotex's sale of its anhydrate product until patent 723 expires. The grant of injunctive relief, whether under the patent statute or under the Hatch-Waxman Act, would be contrary to the principles of equity. SmithKline acknowledges the application of those principles to its request for an injunction, and I hold that they also apply to its request for the delay order that would have the identical effect as the injunction.
For these reasons I am instructing the clerk of the district court to enter a final judgment for the defendants, dismissing SmithKline's suit with prejudice.
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