Patent Infringement
7/24/2008 10:18:15 PM EST
Covenant Not to sue for Patent Infringement: Merck & Co., Inc. v. Apotex, Inc., 2008 U.S. App. LEXIS 15014 (Fed. Cir. July 16, 2008)
LexisNexis Law Center Staff and Attorney, Ryley, Carlock, & Applewhite
In Merck & Co., Inc. v. Apotex, Inc., 2008 U.S. App. LEXIS 15014 (Fed. Cir. July 16, 2008), the Federal Circuit affirmed the district court’s dismissal of plaintiff’s case as moot in light of the fact that the plaintiff gave the defendant a covenant not to sue for infringement which essentially opened up defendant’s entry into the market to manufacturer and sell a generic version of defendant’s drug Fosomax. The district court denied defendant’s request to amend its counter claim to include an antitrust claim.
Plaintiff filed suit against the manufacturer Apotex for patent infringement when the manufacturer filed an abbreviated new drug application (ANDA) with the Food and Drug Administration. The manufacturer counterclaimed for a declaratory judgment of noninfringment and rendering plaintiff’s patent invalid. After discovery, plaintiff gave the manufacturer a covenant not to sue for infringement. The trial court, finding that the case had been rendered moot, then granted the plaintiff’s motion to dismiss all claims, including defendant’s counterclaims. The court also denied defendant’s request to amend its counterclaims to add an antitrust claim. The district court found that Apotex failed to sufficiently plead an antitrust claim and failed to allege facts sufficient to support its antitrust counterclaim. The Federal Circuit affirmed.
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