By Suresh Pillai --
Judge Denies Attorneys Fees to Sandoz in Dispute with Sanofi-Aventis
The U.S. District Court for the Central District of California denied Sandoz Inc.'s motion seeking attorneys' fees and costs in its patent infringement suit with Sanofi-Aventis. The patents-in-suit, U.S. Patent Nos. 5,389,618 and RE 38,743, cover Sanofi's anti-clotting drug, Lovenox®. The current litigation commenced when Aventis filed patent infringement suits against Amphastar and Teva in 2003. Following Sandoz's filing of an ANDA, Aventis filed a separate suit against Sandoz in 2007, alleging infringement of the Lovenox® patents. Also in 2007, the District Court for the Central District of California found the patents to be unenforceable on the basis of Aventis' inequitable conduct before the U.S. Patent and Trademark Office during patent prosecution. The Court found that, because Aventis failed to disclose information pertaining to drug dosage, Aventis intended to deceive the Patent Office. The District Court's decision was subsequently affirmed by the Court of Appeals for the Federal Circuit (see Patent Docs report). Following that decision, the District Court granted summary judgment in favor of Sandoz.
In its motion for attorneys' fees and costs, Sandoz argued that fees and costs were warranted because Aventis filed suit against Sandoz after Aventis was aware that the patents-in-suit were unenforceable and because Aventis had "unnecessarily multiplied the proceedings." Aventis countered that it had attempted to minimize the expense and undue prejudice to Sandoz during its time awaiting a final disposition in Aventis' suit against Amphastar. The District Court agreed with Aventis, finding that none of Aventis' actions caused the case to rise to the level of an exceptional case for the purpose of awarding attorneys' fees.
Albion and Lannett Resolve Patent Suit Over Ferrochel®
The U.S. District Court for the District of Utah dismissed the claims and counterclaims of both Albion Laboratories and Lannett Co. Inc., resolving their year long patent dispute over Albion's patented iron supplement Ferrochel®. This resolution came on the heels of both parties jointly moved to end the case. The patents-in-suit, U.S. Patent Nos. 5,516,925 and 6,716,814, cover the active ingredient in Albion's iron product. The original suit commenced in 2008, when Albion sued Lannett for patent infringement, alleging that Lannett's generic vitamin products incorporated Albion's patented iron supplement. Albion sought relief in the form of an injunction against Lannett and monetary damages. Lannett countersued, alleging that Lannett had purchased Ferrochel® from Albion expressly for the purpose of using the iron supplement in Lannett's multivitamin. In its complaint, Lannett alleged tortuous interference, breach of contract, and misrepresentation.
Under the order ending the litigation, both parties waived all rights of appeal and are to bear their own costs.
Warsaw Orthopedic, Inc. Awarded $2 Million in Globus Patent Dispute
The U.S. District Court for the Eastern District of Pennsylvania has awarded Warsaw Orthopedic, a Medtronic subsidiary, $2.1 million in its patent infringement suit with Globus Medical Inc. over Globus' infringement of patents covering the Medtronic and Warsaw Sextant® System. The patents-in-suit are U.S. Patent Nos. 6,530,929 and 7,008,422 and are related to instruments and methods for the stabilization of bony structures in spinal surgery. Warsaw and three other Medtronic subsidiaries, Medtronic USA, Medtronic Puerto Rico Operations Co., and Medtronic Sofamor Danek Deggendorf GmbH, sued Globus in 2006, alleging that Globus had infringed the two patents-in-suit. At trial, plaintiffs sought lost profits and royalties for a single Medtronic subsidiary, Medtronic USA, as well as an injunction barring Globus from selling infringing products, but Globus filed a post-trial brief arguing that only Warsaw had the requisite standing to recover on an infringement cause of action.
The District Court agreed with Globus, basing its decision on the history of the patents' prosecution and the fact that Warsaw's predecessor company was the original assignee of the patents-in-suit. The Court held that the licensing agreements between Warsaw and the other Medtronic subsidiaries failed to transfer exclusionary rights that would grant the subsidiaries standing to sue for patent infringement. Based on this, the Court awarded Warsaw $2.1 million, an amount equal to 15 percent of Globus' gross revenues from the sales of the infringing products. Because Warsaw was a manufacturer and not a distributor, the Court concluded that Warsaw was unlikely to suffer irreparable harm. As a result, the Court refused to grant Warsaw a permanent injunction and refused to award lost profits.
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