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FLH Attorneys Prevail in November 2004
Decision in Section 291 Judicial Interference


On November 19, 2004, Judge Jed S. Rakoff of the U.S. District Court for the Southern District of New York decided in favor of FLH client Medichem, S.A. in a judicial patent interference that turned on the obviousness of a claimed chemical process. The district court held that a Medichem patent and a patent owned by defendant Rolabo, S.L., both of which claim processes for making loratadine, the active ingredient in the popular allergy medicine Claritin®, interfere with each other. The district court further held that Medichem proved priority of invention over Rolabo's patent, rendering all of the claims of Rolabo's patent invalid.

The matter was before Judge Rakoff on remand from the U.S. Court of Appeals for the Federal Circuit. As previously reported on this website, the Federal Circuit issued a decision in Medichem's favor in December 2003, when it vacated the district court's initial determination following a one-week trial of no interference between Medichem's and Rolabo's patents. The Federal Circuit held that the district court had misapplied the two-way patentability test used to determine interference and reversed the district court's conclusion that Rolabo's patent was neither anticipated by nor obvious in view of Medichem's patent. The Federal Circuit held that Medichem's claims anticipated Rolabo's claims, thereby satisfying one leg of the two-way patentability test and remanded the case to the district court for further obviousness analysis under the second leg of the test.

After the Federal Circuit decision, Medichem moved for judgment on remand. The district court applied the second leg of the two-way test and found it satisfied as Medichem had urged. With both legs of the two-way test satisfied, the district court reaffirmed its earlier holding that Medichem proved priority of invention over Rolabo and invalidated all claims of Rolabo's patent.

FLH attorneys Barry White, Jim Stronski, and John Taylor represented Medichem at trial and on appeal.



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