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Pharmaceutical Resources, Inc. v. Roxane Laboratories, Inc.

253 F. App'x 26 (2007)

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Pharmaceutical Resources, Inc. v. Roxane Laboratories, Inc.

United States Court of Appeals for the Federal Circuit
253 F. App'x 26 (2007)

RW

Facts

Par Pharmaceuticals, Inc. (Par) (plaintiff) patented a method for making stable flocculated megestrol acetate suspensions. Par believed that most manufacturers would make these suspensions using one of 22 common surfactants. However, the patent was broadly worded to cover any of several hundred possible surfactants. The patent description provided three working examples showing how Par successfully tested its method using seven different surfactants. The patent description cautioned that anyone seeking to use Par’s method would need to choose a surfactant carefully and that finding the right concentration range for each surfactant was critically important. Because prior art furnished little guidance for identifying proper concentration ranges, which varied greatly from one surfactant to another, the successful application of Par’s method to an untried surfactant was likely to be a matter of trial-and-error experimentation. Par, joined by Pharmaceutical Resources, Inc. (plaintiff), sued Roxane Laboratories, Inc. (Roxane) (defendant) for infringing the patent. The federal district court granted Roxane’s motion for summary judgment. Par and Pharmaceutical Resources appealed to the Federal Circuit.

Rule of Law

Issue

Holding and Reasoning (Moore, J.)

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