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As in other courts, amicus briefs at the U.S. Circuit Court of Appeals for the Federal Circuit rarely draw much attention. But in the high-stakes patent dispute over Prozac, a fight has broken out over whether the Federal Circuit should consider five friend-of-the-court briefs supporting Eli Lilly and Co., the maker of the popular anti-depressant. Barr Laboratories Inc., which is hoping to scale back Eli Lilly’s patent in its own effort to sell a generic version of Prozac, says the briefs from industry trade groups and others don’t help the court and are too biased in favor of Lilly. The attack on the would-be amici is an extremely unusual — some say wrongheaded — appellate tactic. The dust-up started after a Federal Circuit panel last August voted 3-0 against Lilly in its infringement case against Barr and other would-be competitors. Judge Arthur Gajarsa, Chief Judge Robert Mayer, and Senior Judge Daniel Friedman held that Lilly had broken rules against “double patenting.” The decision slashed about two years from the period of time that Indianapolis-based Lilly held exclusive rights to the popular anti-depressant drug. Lilly’s stock value has dropped some 30 percent since the decision in Eli Lilly and Co. v. Barr Laboratories Inc., et al. Not surprisingly, Lilly asked the panel — and the full 12-member court — to give the case another look. Federal Circuit panels rarely agree to rehear cases — and the whole court grants just a handful of en banc requests each year. But in what appears to be a promising sign for Eli Lilly, the court in October asked Barr to respond to the rehearing request. Others responded, too — including the Biotechnology Industry Organization, the Intellectual Property Owners Association, the Federal Circuit Bar Association, Guilford Pharmaceuticals, and John Marshall Law School Professor Janice Mueller. They filed routine motions to submit amicus briefs supporting Lilly’s request that the court rehear the case. Their experience since then has been anything but routine. Barr, represented by Chicago’s Winston & Strawn and other firms, shot back its own brief, urging the court to reject its would-be friends. “Most of the amici evidently are acting as ‘friends’ of Lilly, not the Court,” Winston & Strawn lawyers Dan Webb and George Lombardi argued in October. “An amicus is supposed to function as an ‘impartial friend’ of the Court, and in its classic role, provide information and insight overlooked by the parties,” the Barr opposition brief reads. “None of the would-be amici fulfills this role.” Barr cites a 1997 opinion by Judge Richard Posner of the 7th Circuit. Explaining his ruling to reject an amicus brief, Posner wrote that most amici “are an abuse” because they just make the same arguments made by litigants. Barr also claims that the amici briefs came as a result of Lilly’s campaign to legal groups for support. One would-be friend, Janice Mueller of Chicago’s John Marshall Law School, acknowledges that Lilly lawyers from Finnegan, Henderson, Farabow, Garrett & Dunner contacted her, seeking amicus support for a rehearing. Litigants often ask academics and other lawyers to consider filing amicus briefs, says Mueller. She calls Barr’s opposition “ridiculous.” In 12 years of following IP law — including two years clerking for the late Federal Circuit Judge Giles Rich — Mueller adds that she has never heard of a litigant opposing the filing of an amicus brief. Washington appellate advocate Carter Phillips, who is not involved in the case, calls the tactic “inherently self-defeating” because the opposition will draw attention to amicus brief. “It looks like you’ve got something to hide,” adds Phillips, a partner at the Washington, D.C., office of Chicago’s Sidley & Austin. Barr lawyer Lombardi rejects Phillips’ criticism. Amici, says Lombardi, “are supposed to add something to the equation.” That is not happening in this case, he adds. Only the Biotechnology Industry Organization has filed a response to Barr’s opposition. Represented by Jeffrey Kushan of the Washington, D.C., office of Atlanta’s Powell, Goldstein, Frazer & Murphy, BIO says that its brief “addresses highly relevant legal and policy-based arguments that go beyond those addressed” by Lilly. The group, Kushan writes, has 900 members and offers the court “a window into the long-term impact of the panel’s decision on all patent holders and applicants beyond the immediate impact on the private interests of Eli Lilly.” Lilly itself is a member of BIO, but it did not participate in the decision to file the amicus brief, according to an affidavit filed by BIO Director Lila Feisee. The spat has prompted Zenith Goldline Pharmaceuticals Inc., another generic drug company that is fighting Lilly’s Prozac patent in a separate piece of litigation, to file its own amicus brief. In its Dec. 1 filing, the Miami-based company said it disagreed with the brief of the IP Owners Association and was therefore filing its own amicus brief opposing a rehearing. Lawyers have said they expect a decision on rehearing and the court’s consideration on the amicus briefs soon. REPLACING PLAGER When the presidential election finally ended with a win for Republican George W. Bush, it could have ended the hopes of veteran patent attorney Donald Dunner to join the Federal Circuit bench. Dunner, 69, was the Federal Circuit Bar Association’s choice to fill the seat vacated in 1999 by the death of Judge Giles Rich. Instead, President Bill Clinton chose Foley & Lardner partner Richard Linn. On Nov. 30, another seat opened, courtesy of Judge S. Jay Plager, who took senior status. But Dunner, a name partner in Finnegan, Henderson, Farabow, Garrett & Dunner, says he’s a registered Democrat and expects Bush to appoint Republicans. Then again, he adds, “If Bush wants to reach out and pick a Democrat, I’d love to serve.” The Federal Circuit’s jurisprudence � patents, government contracts, and international trade law — is largely unaffected by political issues. Nonetheless, says one Federal Circuit judge, judge-picking “is a political process more than we like to admit.” It’s likely to be months before the Bush administration — slowed by five weeks of vote counting — sets up its selection operation. Considering that Plager’s seat is only one of 75 vacancies in federal courts around the country, the Federal Circuit could be low on Bush’s list. Since presidents can’t look to home-state senators for recommendations for the Federal Circuit, which has national jurisdiction, over the years the bar association has occasionally offered suggestions or testified at confirmation hearings. Jerald Howe Jr. of the D.C. office of Steptoe & Johnson, who chairs the Federal Circuit Bar Association’s judicial selection committee, says the panel has not decided how to proceed with recommending Plager’s successor. Jonathan Ringel, senior reporter in the American Lawyer Media Washington bureau, can be reached at [email protected]legaltimes.com.

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