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SCHERING CORP. v. ROUSSEL-UCLAF SA

No. 96-1246.

104 F.3d 341 (1997)

SCHERING CORPORATION, Plaintiff-Appellant, v. ROUSSEL-UCLAF SA, Involuntary Plaintiff-Appellee, v. ZENECA INC. and Zeneca Holdings Inc., Defendants-Appellees.

United States Court of Appeals, Federal Circuit.

January 8, 1997.

Attorney(s) appearing for the Case

Gregory L. Diskant, Patterson, Belknap, Webb & Tyler, LLP, New York City, argued for plaintiff-appellant. With him on the brief were Jeffrey I.D. Lewis, Jennifer L. Pariser, Michael J. Timmons. Of counsel on the brief were Robert J. Trainor and Jane G. Wasman, Schering Corporation, Kenilworth, NJ.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., argued for involuntary plaintiff-appellee. With him on the brief was John R. Thomas. Also with him on the brief were James F. Lesniak, Joseph R. Re, and Joseph F. Jennings, Knobbe, Martens, Olson & Bear, Newport Beach, CA.

E. Anthony Figg, Rothwell, Figg, Ernst & Kurz, of Washington, D.C. argued for defendants-appellees. With him on the brief were Steven Lieberman and Joseph A. Hynds. Also with him on the brief were Jack B. Blumenfeld, Morris, Nichols, Arsht & Tunnell, Wilmington, DE, and Joel M. Cohen, Davis, Polk & Wardwell, of New York City. Of counsel on the brief were William C. Lucas and Laura J. Davies, Zeneca, Inc., Wilmington, DE.

Before PLAGER, Circuit Judge, SMITH, Senior Circuit Judge, and BRYSON, Circuit Judge.

BRYSON, Circuit Judge.

Plaintiff Schering Corporation (Schering) and involuntary plaintiff Roussel-UCLAF SA (Roussel) are co-owners of a pharmaceutical patent. In October 1995, Roussel granted a license under the patent to defendants Zeneca Inc. and Zeneca Holdings, Inc. (collectively, Zeneca). Shortly before the license was granted, however, Schering filed an infringement action against Zeneca. When Zeneca sought to interpose the license as a defense, Schering responded...

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