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Teva Pharmaceuticals Industries Ltd. v. AstraZeneca Pharmaceuticals

Summarized by: 

Date Filed: 12-01-2011
Case #: No: 2011 – 1091
Rader, Linn and Dyk
Full Text Opinion: http://www.patentlyo.com/files/11-1091.pdf

Patents: Conception occurs when the inventor has a specific, settled idea, a particular solution to the problem at hand, but the inventor need not understand precisely why his invention works in order to achieve an actual reduction to practice.

Teva Pharmaceuticals Industries Ltd. (“Teva”) appealed from the Eastern District of Pennsylvania's entry of summary judgment in favor of AstraZeneca Pharmaceuticals (“AstraZeneca”), holding that AstraZeneca’s early development of the drug “Crestor”, which was used for the treatment of dyslipidemia (too high or too low lipid levels in the bloodstream), satisfied the requirements for prior invention. A challenger claiming invalidity of a patent can prove that it was the first inventor by proving that it reduced its invention to practice first, or that it was the first party to conceive of the invention and then exercised reasonable diligence in reducing it to practice. The court followed precedent that conception occurs when the inventor has a specific, settled idea, a particular solution to the problem at hand, but the inventor need not understand precisely why his invention works in order to achieve an actual reduction to practice. The court held that this means that to establish prior invention, the party asserting it must prove that it “appreciated” what it had made, and that the prior inventor does not need to know everything about how or why its invention worked. Nor must it conceive of its invention using the same words as the patentee would later use to claim it. Because AstraZeneca “appreciated” what it had made, because they recognized that they had produced a new form of matter, even though they didn’t know everything about how or why it worked, it was indicative that they conceived of the invention, the ruling of the District Court was AFFIRMED.