Eli Lilly successfully defeated three petitions for inter partes review filed by Neptune Generics, Ltd. and Sandoz, Inc. before the Patent Trial and Appeal Board in the United States Patent & Trademark Office. The petitions, which were joined by twelve additional parties in nine additional joinder petitions, related to U.S. Patent No. 7,772,209, a patent concerning the administration of Lilly’s blockbuster anti-cancer drug Alimta®. Oral argument was held in March 2017. On October 5, 2017 the Patent Trial & Appeal Board issued final decisions in Lilly’s favor, finding that Neptune and Sandoz had not shown any of the claims of the patent to be unpatentable.
Adam Perlman, Dov Grossman, David Krinsky, and Alec Swafford represented Eli Lilly in the proceedings.
The decision marks another success for Eli Lilly in multiple matters against several generic drug manufacturers challenging the patent protecting Alimta®.
The firm was lead trial counsel for Lilly at a bench trial in the U.S. District Court for the Southern District of Indiana concerning multiple generic companies’ infringement of Lilly’s patent. This was the first pharmaceutical case in the country to address the issue of “divided infringement,” which has been a hot topic in recent Supreme Court and Federal Circuit cases. The district court ruled in Lilly’s favor, finding that the sale of the generics’ products would induce infringement of Lilly’s claims.
Previously in the same case, Williams & Connolly served as lead trial counsel at a two-week bench trial against multiple generic companies over the validity of Lilly’s patent. The U.S. District Court in Indianapolis rejected all of the generic challengers’ invalidity arguments and ruled in Lilly’s favor on all issues.
As Lilly’s lead counsel in the U.S. Court of Appeals for the Federal Circuit, Williams & Connolly also defended these victories following the generic companies’ appeals of the district court’s rulings on infringement and invalidity. In a unanimous decision in January 2017, the Federal Circuit affirmed the district court’s rulings in all respects. The appeal was the first time that the appellate court addressed the issue of “divided infringement” in a pharmaceutical context.