Wyeth Says Previous Materna Patent Decisions Unfairly Favored State Law

A Colorado federal court decision in an 11 year-old vitamin patent infringement case unfairly allowed state law to override federal laws, according to a petition for writ of certiorari recently filed by Wyeth with the Supreme Court.

The case involves the viability of the company's patent for a reformulated version of the Materna line of prenatal vitamins, which Wyeth acquired through the 1993 purchase of American Cyanamid.

According to the petition, Wyeth feels "the district court's award has enabled [the plaintiffs] to use state law to gain 'patent-like protection' for an idea for which they had forfeited any claim to federal patent protection."

Allowing state laws to thus overrule the federal Patent Act "creates a powerful new source of retrospective insecurity for patent rights," according to Wyeth.

"Even if it would be permissible to allow a state law action to remedy conduct of the sort at issue here in the face of statutory silence, it cannot be permissible when the Patent Act itself addresses the problem," the petition states.

The plaintiffs - the University of Colorado and two of its researchers, Robert Allen and Paul Seligman - are scheduled to file a response by March 18.

The lawsuit originally was filed by the researchers in 1993. Allen and Seligman conducted studies on original and reformulated versions of Materna supplements from 1979-1981 and the research contributed to Cyanamid's 1981 launch of a reformulated version of Materna vitamins.

The U.S. District Court of Colorado found Cyanamid liable for patent infringement in 1997. The case was appealed several times and was denied a rehearing en banc by the U.S. Court of Appeals for the Federal Circuit in November 2003. Wyeth currently owes roughly $58 mil. in exemplary damages, including interest.

In the petition, Wyeth asserts that the plaintiffs forfeited their opportunity to claim property rights to the reformulated supplements according to federal law, but that the original ruling unfairly allowed state law to override federal law.

Wyeth asserts that, according to the Patent Act, a patent application cannot be granted if the invention has been described in a printed publication or has been on sale or in public use for more than a year.

Similarly, Wyeth claims that under the Patent Act, "receipt of a patent is barred when the inventor 'has abandoned the invention.'" Abandonment of the invention occurs when the inventor allows publication to occur "without seasonable application for patent protection," or when the inventor voluntarily acquiesces to the public sale or use of the product for more than a year.

In that case, Allen and Seligman would have abandoned their rights to the reformulated Materna line, Wyeth says. The new Materna products were launched in 1981 and Cyanamid's patent was issued in 1984, but Allen and Seligman did not sue until 1993.

The petition points out that Allen never filed for a patent based on the 1979-1981 studies, despite the fact that he was "an experienced user of the patent system and the holder of several patents."

Furthermore, Wyeth notes that Allen "actively participated" in efforts to promote the new Materna supplements in 1981, when he took part in a press conference and was interviewed by newspapers and radio stations.

Wyeth also reiterated the finding by the district court and the court of appeals that the doctors "freely conveyed" the results of the studies to Cyanamid, "without restriction of any kind, but with the expectation that Cyanamid would use the information for its commercial benefit."

In its original ruling, the Colorado district court ruling determined that the university researchers were the true and sole inventors of the subject matter for the patent. The court also found Cyanamid to have exploited the researchers and to have acted in a "clandestine" and "deceptive" manner.

In fact, the amount that the Allen and Seligman will gain in financial rewards exceeds the amount they would have achieved through patent ownership, Wyeth argues.

"Once individuals have abandoned such property rights, they should not be allowed to use state common law actions to gain the equivalent of (or more than) what they might have obtained if they had made use of the patent system in the first place," Wyeth says.