Following its win on appeal, AstraZeneca Pharmaceuticals failed to persuade a federal judge to award it attorney fees for its defense against allegations that it violated Teva Pharmaceutical Industries’ patent for a component to drugs that lower cholesterol.
AstraZeneca prevailed in district court as well as on appeal in the Federal Circuit, but did not convince U.S. District Judge William H. Yohn Jr. of the Eastern District of Pennsylvania that the case was “exceptional,” which would have warranted the awarding of fees.
“I cannot conclude that Teva’s argument was frivolous or objectively baseless. This was clearly a legitimate legal issue brought in good faith,” Yohn said in Teva Pharmaceutical Industries v. AstraZeneca Pharmaceuticals , explaining that AstraZeneca won the case but was not entitled to fees.
Yohn added, “Nor is there clear and convincing evidence that Teva made this argument in bad faith.”
In 2008, Teva filed a suit alleging that AstraZeneca’s prescription drug called Crestor infringed on its patent, which included formulas for cholesterol-lowering drugs, called statins, that were stabilized by an “amido-group containing polymeric compound,” Yohn said.
Crestor, however, is stabilized with tribasic calcium phosphate, he said, although it also includes crospovidone, which is an amido group with a polymeric compound.
In its summary judgment motion, AstraZeneca had hypothetically conceded infringement, saying it would agree for argument’s sake that the accused formulations in Crestor fell within the scope of the Teva patent.
It then argued that Teva’s patent should be declared invalid because of AstraZeneca’s “prior invention.” The undisputed evidence showed that AstraZeneca invented the formulations first, it argued.
Invoking Section 102(g)(2) as an affirmative defense, AstraZeneca argued that it made the same Crestor product formulations that Teva cites as infringement before December 1999, which is the earliest date that Teva claims to have conceived of them.
However, Teva argued that AstraZeneca used crospovidone as “a disintegrant and did not understand crospovidone to have a stabilizing effect, even though it did appreciate that the formulation was stable,” Yohn said.
“Concluding that AstraZeneca’s appreciation of the stabilizing effect of crospovidone — as opposed to its appreciation of the stabilization of its overall pharmaceutical composition containing crospovidone — was not required, I granted AstraZeneca’s motion for summary judgment and held Teva’s asserted claims invalid under 35 U.S.C. [Section] 102(g)(2) because of AstraZeneca’s prior invention,” Yohn said of his earlier opinion in the case.
Teva then filed an appeal from that decision to the Federal Circuit, which affirmed Yohn’s grant of summary judgment.
In assessing AstraZeneca’s motion for attorney fees, though, Yohn held that the case did not rise to the exceptional level because Teva didn’t bring the suit in bad faith and the litigation was not objectively baseless.
Neil Schur of Stevens & Lee in Philadelphia, who was on the team representing Teva, said the company had no comment on Yohn’s opinion.
Jamie Bischoff of Ballard Spahr in Philadelphia, who represented AstraZeneca, could not be reached for comment.
(Copies of the six-page opinion in Teva Pharmaceutical Industries v. AstraZeneca Pharmaceuticals , PICS No. 12-1407, are available from The Legal Intelligencer . Please call the Pennsylvania Instant Case Service at 800-276-PICS to order or for information.) •