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

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.