- Acumen Powered by Robins Kaplan LLP®
- Affirmative Recovery
- American Indian Law and Policy
- Antitrust and Trade Regulation
- Appellate Advocacy and Guidance
- Business Litigation
- Civil Rights and Police Misconduct
- Class Action Litigation
- Commercial/Project Finance and Real Estate
- Corporate Governance and Special Situations
- Corporate Restructuring and Bankruptcy
- Domestic and International Arbitration
- Entertainment and Media Litigation
- Health Care Litigation
- Insurance and Catastrophic Loss
- Intellectual Property and Technology Litigation
- Mass Tort Attorneys
- Medical Malpractice Attorneys
- Personal Injury Attorneys
- Telecommunications Litigation and Arbitration
- Wealth Planning, Administration, and Fiduciary Disputes
Acumen Powered by Robins Kaplan LLP®
Ediscovery, Applied Science and Economics, and Litigation Support Solutions
-
December 2, 2024Robins Kaplan LLP Announces 2025 Partners
-
November 20, 2024Eighth Circuit Affirms U.S. Merchants Victory in Trade Dress Infringement Case
-
November 15, 2024Lauren Coppola Named an Emerging Leader by Profiles in Diversity Journal
-
December 11, 20242024 Year in Review: eDiscovery and Artificial Intelligence
-
December 12, 2024Strategies for Licensing AI: A Litigation Perspective
-
December 2024A Landmark Victory for Disabled Homeless Veterans: Q&A with the Trial Team
-
November 8, 2024Trademark tensions on the track: Court upholds First Amendment protections in Haas v. Steiner
-
November 8, 2024Destination Skiing And The DOJ's Mountain Merger Challenge
-
September 16, 2022Uber Company Systems Compromised by Widespread Cyber Hack
-
September 15, 2022US Averts Rail Workers Strike With Last-Minute Tentative Deal
-
September 14, 2022Hotter-Than-Expected August Inflation Prompts Massive Wall Street Selloff
Find additional firm contact information for press inquiries.
Find resources to help navigate legal and business complexities.
Horizon Pharma, Inc. v. Dr. Reddy’s Labs., Inc.
Given two critical differences between the invention and the prior art, the claims of the patents-in-suit were not obvious; they were adequately described, and were infringed.
October 20, 2017
Case Name: Horizon Pharma, Inc. v. Dr. Reddy’s Labs., Inc., 11-2317 (MLC) (DEA), 2017 U.S. Dist. LEXIS 107707 (D.N.J. July 12, 2017) (Cooper, J.)
Drug Product and Patent(s)-in-Suit: Vimovo® (naproxen / esomeprazole magnesium); U.S. Patents Nos. 6,926,907 (“the ’907 patent”) and 8,557,285 (“the ’285 patent”)
Nature of the Case and Issue(s) Presented: The patents-in-suit claimed dosage forms of Vimovo, a drug used to reduce arthritis pain. Defendants stipulated that all but one ANDA product (DRL ANDA II) infringed the patents-in-suit. At summary judgement, the court concluded that the DRL ANDA II formulation did not infringe the ’907 patent. The parties thus disputed the validity of both patents-in-suit and whether the DRL ANDA II formulation were to infringe the ’285 patent. The court concluded that the DRL ANDA II formulation infringed the ’285 patent and that the asserted claims of both patents were valid.
Why Plaintiffs Prevailed: Defendants argued that, because the ’285 patent claimed uncoated naproxen, and because the specification discussed formulations that suggested a preference for coated naproxen, the claims were inadequately described. The court disagreed. Though the specification discussed a preference for coated naproxen, nothing in the specification precluded the use of uncoated naproxen. Thus, the use of uncoated naproxen was adequately described. To hold otherwise, the court reasoned, would improperly limit the claims to the preferred embodiments in the specification. The court also rejected the Defendants’ argument that the use of the word “inhibits” in the claims expanded the scope of the claim to encompass undescribed sustained-release formulations, rendering the claims invalid. The court noted that this argument had already been rejected by the PTAB and concluded that it did not pass muster in the present litigation. “Inhibits” did not refer to sustained-release formulations, but instead referred to the use of certain coatings to inhibit the release of NSAIDs in the formulation.
Defendants next argued that both patents-in-suit were obvious in light of the prior art. After reviewing the relevant art, the court determined that the claimed invention differed in two key ways: (i) the invention utilized a proton-pump inhibitor instead of a prostaglandin to prevent NSAID-related ulcers; and (ii) the proton-pump inhibitor used was uncoated. One of ordinary skill, the court reasoned, would not identify these elements in the prior art. Since Defendant stipulated that its formulations, other than the DRL ANDA II formulation, infringed the patents-in-suit, Defendants were liable for infringement of Plaintiffs’ patents.
Having lost its validity arguments, Defendants’ arguments relating to non-infringement of the ’285 patent also failed. The Court pointed to unrebutted testimony that the DRL ANDA II formulation contained each claim element in the ’285 patent. Accordingly, the ’285 patent was both valid and infringed.
Related Publications
Related News
If you are interested in having us represent you, you should call us so we can determine whether the matter is one for which we are willing or able to accept professional responsibility. We will not make this determination by e-mail communication. The telephone numbers and addresses for our offices are listed on this page. We reserve the right to decline any representation. We may be required to decline representation if it would create a conflict of interest with our other clients.
By accepting these terms, you are confirming that you have read and understood this important notice.