Abbott Laboratories v. Geneva Pharmaceuticals, Inc.

Facts

Beginning in 1987, Plaintiff marketed a treatment for hypertension, terazosin hydrochloride, exclusively under the name Hytrin. Terazosin hydrochloride exists in four anhydrous forms and Claim 4 of Plaintiff's patent for the product claims the Form IV anhydrate. Defendant sought to market a generic form of Hytrin using the Form IV anhydrate and Plaintiff sued. Defendant argued that Form IV was anticipated because it was sold in the United States more than a year prior to Plaintiff's patent filing date of October 18, 1994. Three sales of Form IV terazosin hydrochloride anhydrate had been made in the United States by Byron Chemical Company, Inc. more than one year before Plaintiff's filing date. Byron itself had purchased the substance at issue from two foreign manufacturers. When Byron made the sales in the United States, the parties were not aware of the identity of the particular form they were dealing with. It was after the sales were made that the samples were tested and it was found that Form IV had been sold. Defendant's motion for summary judgment was granted by the district court, and the court held that Claim 4 of the patent was invalid under the on-sale provision. Plaintiff appealed.