Court Report - October 7, 2012

by McDonnell Boehnen Hulbert & Berghoff LLP

[author: Sherri Oslick]

Gavel About Court Report:  Each week we will report briefly on recently filed biotech and pharma cases.

AbbVie Inc. et al. v. Banner Pharmacaps Inc.
1:12-cv-01228; filed September 28, 2012 in the District Court of Delaware

• Plaintiffs:  AbbVie Inc.; Wisconsin Alumni Research Foundation
• Defendant:  Banner Pharmacaps Inc.

Infringement of U.S. Patent No. 5,597,815 ("Prevention of Hyperphosphatemia in Kidney Disorder Patients," issued January 28, 1997) based on Banner's filing of an NDA (under § 505(b)(2) of the Food, Drug and Cosmetic Act) to manufacture a generic version of Abbott's Zemplar® (paricalcitol, used to treat secondary hyperparathyroidism in patients with kidney failure).  View the complaint here.

Ivax LLC v. Celgene Corp.
0:12-cv-61917; filed September 28, 2012 in the Southern District of Florida

Infringement of U.S. Patent No. 7,759,481 ("Solid State Forms of 5-Azacytidine and Processes for Preparation Thereof," issued July 20, 2010) based on Celgene's manufacture and sale of its Vidaza® (azacitidine, used to treat myelodysplastic syndrome).  View the complaint here.

Merck Sharp & Dohme Corp. et al. v. Sandoz Inc.
2:12-cv-06077; filed September 27, 2012 in the District Court of New Jersey

• Plaintiffs:  Merck Sharp & Dohme Corp.; MSD International GmBH
• Defendant:  Sandoz Inc.

Infringement of U.S. Patent Nos. RE42,461 ("Hydroxy-substituted Azetidinone Compounds Useful as Hypocholesterolemic Agents," issued June 14, 2011), 5,846,966 ("Combinations of Hydroxy-Substituted Azetidinone Compounds and HMG CoA Reductase Inhibitors," issued December 8, 1998), 7,030,106 ("Sterol Absorption Inhibitor Compositions," issued April 18, 2006), and 7,612,058 ("Methods for Inhibiting Sterol Absorption," issued November 3, 2009) following a Paragraph IV certification as part of Sandoz's filing of an ANDA to manufacture a generic version of Merck's Zetia® (ezetimib, used to treat elevated cholesterol levels).  View the complaint here.

Gilead Sciences, Inc. v. Kappos
1:12-cv-01090; filed September 27, 2012 in the Eastern District of Virginia

Review and correction of the patent term adjustment calculation made by the U.S. Patent and Trademark Office for U.S. Patent No. 8,148,374 ("Modulators of Pharmacokinetic Properties of Therapeutics," issued April 3, 2012).  View the complaint here.

Genetic Technologies Ltd. v. Medical Diagnostic Laboratories, L.L.C.
3:12-cv-06053; filed September 26, 2012 in the District Court of New Jersey

Genetic Technologies Ltd. v. Reprogenetics, L.L.C.
2:12-cv-06052; filed September 26, 2012 in the District Court of New Jersey

The complaints in these cases are substantially identical.  Infringement of U.S. Patent No. 5,612,179 ("Intron Sequence Analysis Method for Detection of Adjacent Locus Alleles as Haplotypes," issued March 18, 1997) based on defendants' manufacture, use, sale, and offer for sale of genetic carrier screening services (Medical Diagnostic Laboratories) or preimplantation genetic diagnosis services (Reprogenetics).  View the complaint here.  View the Medical Diagnostic Laboratories complaint here.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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