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PFIZER INC. v. PERRIGO CO.

August 6, 1996

PFIZER INC., Plaintiff, against PERRIGO COMPANY and L. PERRIGO COMPANY, Defendants.


The opinion of the court was delivered by: CHIN

 CHIN, D.J.

 In this action, Pfizer Inc. ("Pfizer") alleges that Perrigo Company and L. Perrigo Company (together, "Perrigo" or "defendants") infringed upon its patent and trade dress rights pertaining to its Plax(R) pre-brushing dental rinse product. Perrigo now moves for summary judgment on the patent infringement claims on the ground of patent invalidity. For the reasons discussed below, the motion is denied.

 In support of their motion, defendants argue that the patent on the Plax(R) formula, United States Patent No. 5,338,538 (the "'538 patent"), is invalid under a statutory bar that prohibits an inventor from patenting an invention that was "on sale" or "in public use" one year before the application for the patent was filed. See 35 U.S.C. § 102(b). Perrigo argues that an in-home taste test conducted by Pfizer in May-June 1992 constituted a public use occurring more than one year before the application for the patent at issue in this suit was filed.

 Pfizer opposes the motion on two grounds. First, although the application that matured into the '538 patent was filed on June 18, 1993, Pfizer seeks to rely on an earlier application. An earlier application was submitted on behalf of Pfizer on July 31, 1991 and a second application was filed on June 10, 1992 (the "June 10, 1992 application" or the "parent application"). Pfizer argues that the '538 patent is entitled to the June 10, 1992 filing date of the parent application under 35 U.S.C. § 120. Second, Pfizer argues that the in-home taste test was not a public use within the meaning of the statute.

 DISCUSSION

 1. Summary Judgment Standard

 Summary judgment may be granted when "there is no genuine issue as to any material fact and . . . the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c); see Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 585-87, 89 L. Ed. 2d 538, 106 S. Ct. 1348 (1986). Accordingly, the Court's task is not to "weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). To create an issue for trial, there must be sufficient evidence in the record favoring the party opposing the motion such that a reasonable jury could find in that party's favor. Anderson, 477 U.S. at 249-50.

 2. Burden of Proving Invalidity of Patent

 Under 35 U.S.C. § 282, patents are presumed valid and the party challenging the patent bears the burden of establishing invalidity of the patent or of a particular claim of the patent. 35 U.S.C. § 282; see Philip v. Mayer, Rothkopf Indus., Inc., 635 F.2d 1056, 1060 (2d Cir. 1980); see also Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1573 (Fed. Cir. 1985); accord Therma-Tru Corp. v. Peachtree Doors Inc., 44 F.3d 988, 992 (Fed. Cir. 1995) (citation omitted). The party disputing a patent's validity must prove invalidity by clear and convincing evidence. Ralston Purina, 772 F.2d at 1574 (citations omitted).

 Perrigo argues that the '538 patent is invalid under 35 U.S.C. § 102(b) because the product was in public use more than one year before the application for the patent was filed. Under section 102(b), "A person shall be entitled to a patent unless . . . the invention was . . . in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States . . . ." 35 U.S.C. § 102(b).

 Pfizer argues that the '538 patent is entitled to the filing date of the parent application, June 10, 1992, under 35 U.S.C. § 120, which provides that a patent application will be deemed filed on the date that an earlier application was filed if certain requirements are satisfied.

 3. Effective Date of Application for the '538 Patent

 Section 120, entitled "Benefit of earlier filing date in the United ...


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