Logourl black
From our private database of 13,800+ case briefs...

Apotex USA, Inc. v. Merck & Co., Inc.

Court of Appeals for the Federal Circuit
254 F.3d 1031 (2001)


Facts

Apotex (plaintiff) is the assignee of two patents relating to a process for making enalapril sodium. Mer­ck (defendant) has been manufacturing and selling enalapril sodium since 1983 under the trade name Vasotec, and has patents to the enalapril sodium compound but not to the process for manufactur­ing it in tablet form. In 1988, Merck disclosed the ingredients in various internationally-sold tablets. In 1992, Merck also disclosed in a widely circulated Canadian product monograph the ingredients Merck used to manufacture enalapril sodium. In 1991, Merck sued Apotex in Canada for infringement of Merck’s Canadian patent to enalapril sodium. Evidence in the Canadian patent infringement trial included a video deposition of a Merck officer wherein he pro­vided a detailed description of Merck’s method of manufacturing the tablet form of enalapril sodium sold in Canada. Days after this testi­mony, an Apotex scientist purportedly invented the process claimed in the two Apotex patents at issue in the present case. Apotex filed suit against Merck for infringement of its enalapril sodium patents. Apotex and Merck filed cross-motions for summary judgment. The district court granted Apotex’s motion for summary judgment on the issue of infringement. However, the district court granted Mer­ck’s motion for summary judgment on invalidity grounds because it found that Merck invented within the United States the process claimed in Apotex’s two patents before Apotex, and Merck did not abandon, suppress, or conceal that invention within the meaning of 35 U.S.C. §102(g). Apotex appealed.

Rule of Law

The rule of law is the black letter law upon which the court rested its decision. To access this section, start your 7-day free trial of Quimbee for Law Students.

Issue

The issue section includes the dispositive legal issue in the case phrased as a question. To access this section, start your 7-day free trial of Quimbee for Law Students.

Holding and Reasoning (Lourie, J.)

The holding and reasoning section includes:

  • A “yes” or “no” answer to the question framed in the issue section;
  • A summary of the majority or plurality opinion, using the CREAC method; and
  • The procedural disposition (e.g. reversed and remanded, affirmed, etc.).

To access this section, start your 7-day free trial of Quimbee for Law Students.

What to do next…

  1. Unlock this case brief with a free (no-commitment) trial membership of Quimbee.

    You’ll be in good company: Quimbee is one of the most widely used and trusted sites for law students, serving more than 97,000 law students since 2011. Some law schools—such as Yale, Vanderbilt, Berkeley, and the University of Illinois—even subscribe directly to Quimbee for all their law students. Read our student testimonials.

  2. Learn more about Quimbee’s unique (and proven) approach to achieving great grades at law school.

    Quimbee is a company hell-bent on one thing: helping you get an “A” in every course you take in law school, so you can graduate at the top of your class and get a high-paying law job. We’re not just a study aid for law students; we’re the study aid for law students. Read more about Quimbee.

Here's why 171,000 law students have relied on our case briefs:

  • Written by law professors and practitioners, not other law students. 13,800 briefs, keyed to 187 casebooks. Top-notch customer support.
  • The right amount of information, includes the facts, issues, rule of law, holding and reasoning, and any concurrences and dissents.
  • Access in your classes, works on your mobile and tablet. Massive library of related video lessons and high quality multiple-choice questions.
  • Easy to use, uniform format for every case brief. Written in plain English, not in legalese. Our briefs summarize and simplify; they don’t just repeat the court’s language.