By Sherri Oslick --
Late last week, U.S. District Court Judge Mary Pat Thynge (D. Del.) granted leave to Amgen Inc. to amend and supplement its reply to ARIAD Pharmaceuticals Inc.'s counterclaims to include new claims of inequitable conduct. In her order, Judge Thynge noted that Amgen pled affirmative acts of misconduct and evidence of intent sufficient to support its claim.
Amgen filed its lawsuit for declaratory judgment of non-infringement (by Amgen’s Enbrel® and Kineret®) and invalidity of U.S. Patent No. 6,410,516 on April 20, 2006, on the heels of the jury trial in ARIAD Pharmaceuticals, Inc. v. Eli Lilly and Co., in which ARIAD asserted the ‘516 patent against Lilly based on Lilly’s Evista® and Xigris® products. The ‘516 patent is currently undergoing reexamination with the USPTO.
Amgen’s new claim alleges inequitable conduct on the part of ARIAD for failing to disclose to the USPTO in the reexam proceedings certain deposition testimony of an expert who testified on ARIAD’s behalf at the Lilly trial, and for concealing information on patent validity. More specifically, Amgen claims that ARIAD’s failure to disclose deposition testimony of Dr. Thomas Kadesch taken in an unrelated case, Amgen Inc. v. F. Hoffmann-LaRoche (D. Mass). Dr. Kadesch offered expert testimony in the Lilly case that the ‘516 patent was valid under 35 U.S.C. § 112. In conjunction with his opinions regarding Section 112 issues in the Roche case, Dr. Kadesch was questioned regarding his testimony in the Lilly case. According to Amgen’s allegations, Dr. Kadesch unequivocally recanted his testimony from the Lilly case, and ARIAD purposefully tried to prevent disclosure of this testimony to the USPTO, testimony that ran counter to ARIAD’s position in reexamination in support of patentability.
ARIAD did eventually submit Dr. Kadesch’s Roche deposition testimony to the USPTO, however Amgen asserts that it was included with a number of other items, with no attempt to advise the USPTO of any potential misrepresentations. ARIAD opposed Amgen’s motion as moot, asserting that they had submitted Dr. Kadesch’s deposition testimony within a day of receiving clearance under the protective order in the Roche case. Additionally, ARIAD asserted that Dr. Kadesch’s deposition testimony was not material to the reexam proceedings. In granting Amgen’s motion, Judge Thynge noted that the issues of whether the testimony was material, or whether there was misrepresentation and the requisite intent, were questions of fact to be addressed by the Court.
For additional information regarding this topic, please see:
- "Good News, Bad News for ARIAD in NF-kB Case," July 10, 2007
- "Court Report," April 23, 2007
- "ARIAD Files Infringement Claim against Amgen and Wyeth," April 17, 2007
- "Setback for ARIAD in Dispute with Amgen," January 9, 2007
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