A federal court ruled that Synthon obtained, by inequitable conduct, two US patents alleged to cover a process and an intermediate compound used to make the active ingredient in Pfizer's widely-prescribed hypertension medication, Norvasc.
It was judged that Synthon knowingly withheld Pfizer publications and other information it had in its possession that described the process Synthon sought to patent.
“It's very difficult to meet the standards for establishing inequitable conduct,” said Allen Waxman, Pfizer's general counsel. “But in this case it is clear that Synthon improperly used Pfizer's own published material to obtain a patent that it then tried to enforce against us.”
Pfizer said it intends to seek attorneys' fees from Synthon. However the case may be appealed.
Synthon had asserted that Pfizer's process for manufacturing Norvasc infringed Synthon patents issued in 2003 and 2005.
In August 2006, a jury unanimously ruled that one of those patents was not infringed by Pfizer and was invalid on multiple grounds, principally because it was based on Pfizer's prior published work. Synthon had dropped its claim of infringement on the second patent prior to trial.