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Sue L. Robinson: ANDA Filer Succeeds in Prosecution Laches Defense


District judge Sue L. Robinson this week issued a rare win to a party asserting a laches defense. According to the Court, eleven patent applications and ten abandonements, among others, adequately demonstrated the patent-in-suit’s unenforceability:

“Taken in the totality, this case involves eleven patent applications, ten abandonements, and no substantive prosecution for a decade. CRCT’s primary justification for delay, that neither Examiner Ford nor Examiner Richter would have allowed the applications at issue absent human data, is not objectively reasonable in view of the fact that CRCT never attempted to traverse the rejections (thereby either validating its position or obtaining allowance of its claims). CRCT’s delay, therefore, cannot ‘be explained by reference to [ ] legitimate considerations and/or expectations.’ . . . CRCT introduced no contemporaneous evidence substantiating its position or establishing that CRCT sought to develop the technology prior to the Schering license. CRCT only engaged the PTO once it had a profit motive to do so.”

With these delays, the ANDA filer established the abuse of the patent system necessary to a successful prosecution-laches defense.

Cancer Research Technology v. Barr Labs. Inc., C.A. No. 07-457-SLR (D. Del. Jan. 26, 2010) (Op. Part II).

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