By Suresh Pillai --
Final Judgment Granted to Applera in Dispute with Enzo
On March 5, the U.S. District Court for the District of Connecticut, upon the order of the Court of Appeals for the Federal Circuit (see "Biotech/Pharma Docket," March 2, 2009), reopened the patent litigation suit between Applera (based in Foster City, CA) and Enzo Biochem (based in New York, NY) and issued final judgment in favor of Applera (now Life Technologies, following Applera's merger with Invitrogen). This final judgment was made possible by Enzo's grant of an unrestricted covenant not to sue for infringement of the last patent remaining in the dispute.
Last month, the Federal Circuit issued an order granting Enzo's petition for a writ of mandamus, a petition filed by Enzo in order to clear the way for Enzo's appeal to the CAFC. In issuing final judgment against Enzo, the District Court removed any ambiguity concerning claims status, thereby passing jurisdiction onto the Federal Circuit. By granting the defendants an unrestricted covenant not to sue, Enzo mooted the final remaining issue in the case, the counterclaims of invalidity and noninfringement for the final patent in suit.
Supreme Court Denies Writ of Certiorari in Prilosec Case
On March 8, the Supreme Court denied Toronto, ON-based Apotex's writ of certiorari, refusing to hear Apotex's appeal against AstraZeneca (based in London, UK) in their dispute over Prilosec. Apotex was seeking review of a May 2007 District Court decision that Apotex had infringed AstraZeneca's Prilosec patents (U.S. Patent Nos. 4,786,505 and 4,853,230). In October of 2008, prior to filing its writ, Apotex had sought an en banc hearing by the Federal Circuit, but the CAFC denied Apotex's petition for the hearing, upholding the District Court's findings of infringement (as reported by Patent Docs on June 11, 2008 and August 20, 2008). Following the Supreme Court's denial of a writ of certiorari, the case will return to the lower court for the next phase, a determination and award of damages.
Settlement Agreement Announced in Elan's Suit against Watson
On March 6, Watson Pharmaceuticals, Inc. (based in Corona, CA) agreed to settle its patent dispute with Elan Corp. (based in Dublin, Ireland) over Watson's generic version of Naprelan, covered by U.S. Patent No. 5,637,320, owned by Elan. This settlement brings to a close a lawsuit that started when Andrx Pharmaceuticals, Inc. began marketing generic Naprelan, and Andrx had filed a countersuit. Andrx's successor-in-interest, Watson, became a party to the litigation upon completion of Watson's 2006 purchase of Andrx.
In August, the District Court for the Southern District of Florida found in favor of Elan, ruling that Watson's naproxen sodium products infringed upon Elan's patent. The District Court found that Andrx, in its ANDA filing describing its generic drug, had filed an inaccurate certification notice with respect to the generic product and the manufacturing process. The Court also concluded that Andrx had willfully neglected to file an ANDA without first having received a legal written opinion on infringement with regard to its generic drug.
The settlement stipulates that Watson must pay Elan $18 million. The agreement also prevents Watson from marketing or selling its product until the expiration of Elan's patent in 2014 or, in the alternative, until Elan's patent is found invalid or unenforceable.
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