Earlier Patent on Paxil Anticipated Product by Process Claims for Making Paxil

Case: Smithkline Beecham Corp. v. Apotex Corp., No. 04-1522 (Fed Cir. 2/24/06)


The One Sentence Summary: A product by process claim for the drug paroxetine (marketed as Paxil) was invalid as anticipated in light of an earlier patent on the product itself, and the argument that the new product was different was waived on appeal by burying the argument in a footnote.


What They Were Fighting About: The district court held that patentee's claim for a product by process for the drug Paxil was anticipated by the patentee's earlier patent on paroxetine.

Federal Circuit Holdings:

• The court noted an unresolved issue about whether process steps are limitations, but held the present case did not require resolution of the issue.
• The earlier patent on the product paroxetine anticipated later claims for making the product by a different process.
• Appellant waived its argument that the district court erred in deciding that the new product was the same as the old product by burying the argument in a footnote.