Allergan Sales, LLC v. Teva Pharms. USA, Inc.

Upholding recommendation for summary judgment because water was not a “gelling agent” in the context of the patent-in-suit.

October 24, 2017

GENERICally Speaking: A Hatch Waxman Litigation Bulletin

Case Name: Allergan Sales, LLC v. Teva Pharms. USA, Inc., Civ. No. 2:15-cv-1471-JRG-RSP (Lead), 2017 U.S. Dist. LEXIS 176262 (E.D. Tex. Oct. 24, 2017) (Gilstrap, J.)

Drug Product and Patent(s)-in-Suit: Delzicol® (mesalamine); U.S. Patent No. 6,649,180 (“the ’180 patent”)

Nature of the Case and Issue(s) Presented: The parties submitted claim construction briefing seeking construction of the term “gelling agent.” The magistrate judge construed “gelling agent” as having its plain and ordinary meaning, “a substance that gels the film composition,” then concluded that water could not act as a gelling agent. Based on this construction, the magistrate judge recommended granting Teva’s motion for summary judgment for non-infringement. Allergen objected, but the Article III judge overruled those objections and adopted the magistrate’s conclusions.

Why Teva Prevailed: Teva submitted persuasive expert evidence that water could not function as a gelling agent. Instead, water simply served a passive, not active, role in gelling. Further, there was inventor testimony that water was not a gelling agent. In contrast, Allergen was unable to produce any evidence that water gels the composition of the products at issue in the lawsuit. Accordingly, even with the disputed facts all construed in Allergen’s favor, no reasonable person would find that water serves as a gelling agent. For this reason, the court adopted the magistrate’s recommendation and granted Teva’s motion for summary judgment.

Oren D. Langer


Managing Partner, New York Office
Member of Executive Board

Ryan M. Schultz


Pronouns: he/him

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