NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
06-1047
ALZA CORPORATION
Plaintiff-Appellant,
v.
IMPAX LABORATORIES, INC.,
Defendant-Appellee.
________________________
DECIDED: September 6, 2006
________________________
Before, GAJARSA, CLEVENGER, and PROST, Circuit Judges.
GAJARSA, Circuit Judge.
This appeal was heard together with that in Alza Corp. v. Mylan Laboratories,
Inc., No. 06-1019 (Fed. Cir. 2006) (“Mylan II”), also decided today, in which we affirmed
the district court’s judgment of non-infringement and invalidity of claims 1-3, 11, 13 and
14 of U.S. Patent No. 6,124,3551 (“the ‘355 patent”) in favor of Mylan Laboratories, Inc.
and Mylan Pharmaceuticals, Inc. (collectively, “Mylan”), Alza Corp. v. Mylan Labs., Inc.,
388 F. Supp. 2d 717 (N.D.W. Va. 2005) (“Mylan I”). Based upon our holding in Mylan II,
we affirm the judgment of the district court.
1
The ‘355 patent issued to Guittard et al. and was assigned to Alza.
Alza’s infringement action against Mylan arose from Mylan’s filing of two
Abbreviated New Drug Applications (“ANDAs”) for a generic version of the once-a-day
extended release formulation of the anti-incontinence drug oxybutynin, id. at 720, which
Alza has been marketing as Ditropan XL®. Mylan I at 738. Impax Laboratories, Inc.
(“Impax”) likewise submitted an ANDA for generic extended-release oxybutynin, and
was likewise sued for infringement of all of the claims asserted against Mylan, plus
claims 4 and 15. Alza stipulated that if the district court in the Mylan litigation found all
off the claims asserted against Mylan to be invalid, then it would consent to an entry of
judgment in the Impax litigation “that claims 1, 2, 3, 4, 11, 13, 14 and 15 of the ‘355
patent are invalid.” Alza Corp. v. Impax Labs., No. C03-04032 VRW, (N.D. Cal., Apr.
15, 2004) (“Stipulation Order”). Subsequently, in Mylan I, the Mylan court held all of the
asserted claims to be invalid, and pursuant to the terms of the Stipulation Order, the
Impax court entered final judgment, holding all of the claims asserted in this litigation to
be invalid. Alza Corp. v. Impax Labs., No. C03-04032 VRW (N.D. Cal., Oct. 6, 2005)
(“Impax Final Judgment”). This court has jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(1).
Today, in Mylan II, we have affirmed the district court’s invalidity holding in
Mylan I. Accordingly, based on the terms of the Stipulation Order, we affirm the Impax
Final Judgment and hold that claims 1, 2, 3, 4, 11, 13, 14 and 15 of the ‘355 patent are
invalid.
Costs to Impax.
06-1047 2