Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2006 WL 1141635 (N.D. Ill. Apr. 16, 2007) (Coar, J.).
Judge Coar granted plaintiff Abbott’s motion for a preliminary injunction, after having previously denied it a TRO.* The PI enjoined defendant Sandoz from selling a generic version of Abbott’s patented extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL). The Court held that Sandoz had shown a substantial likelihood of materiality and Abbott’s intent to deceive the PTO based upon Abbott’s failure to disclose certain taste perversion data during prosecution. But because Abbott abandoned the claims to which the taste perversion data was relevant of its own accord, the Court did not find the patent preliminarily unenforceable. The Court explained its reasoning as follows:
Redemption is one of the core principles of the American ethos. Thus in addition to being contrary to the spirit of Scribbs, Kimberly-Clark and the Code of Federal Regulation, it seems wholly inequitable to hold a patent to be invalid for fraudulent conduct in the prosecution of a claim that was withdrawn before actual prosecution had even begun.
The Court then made detailed, initial claim construction rulings and, based upon them, found a substantial likelihood of infringement. The Court also considered Sandoz’s invalidity arguments, but held that Sandoz had not proved a likelihood of success regarding its invalidity arguments. The Court also held that the balance of hardships tipped in Abbott’s favor because allowing Sandoz’s generic product to remain in the market would necessarily take market share from Abbott.
In addition to its preliminary injunction stopping future product sales, the Court also required that Sandoz recall all of its existing product, so long as an adequate bond was set.
* You can read more about the Federal Circuit decision in which the Federal Circuit overturned the Court’s grant of a PI in a related case in the Blog’s archives. You can also read another take on this case at the Orange Book Blog.