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The Southern District of New York (Judge Paul A. Crotty) ruled in favor of Finnegan client AbbVie, in a declaratory judgment action against its licensor The Mathilda and Terence Kennedy Institute of Rheumatology Trust (“Kennedy”). AbbVie brought this action because Kennedy claimed AbbVie would owe royalties on certain sales of its drug Humira®, despite AbbVie's assertion that the Kennedy patent at issue was invalid. Humira® is used by hundreds of thousands of patients to treat diseases such as rheumatoid arthritis and Crohn’s disease, and had revenues of more than $9 billion worldwide in 2012. After a four-day bench trial, the court held all of the claims of the Kennedy patent at issue were invalid for obviousness-type double-patenting. The court entered final judgment declaring all the claims at issue invalid, and declaring AbbVie the prevailing party and awarding costs.
The U.S. Court of Appeals for the Federal Circuit found in favor of Finnegan client DuPont, affirming a district court’s grant of JMOL that plaintiff Novozymes’s patent failed to comply with the written description requirement of 35 U.S.C. § 112 and was thus invalid as a matter of law. Novozymes filed a patent application that disclosed vast numbers of prophetic alpha-amylase proteins without any guidance pointing to which of the proteins actually had advantageous properties. Then, some ten years later, in a continuation application, Novozymes claimed a very particular protein with certain properties that was not in any way highlighted in the original application. The Federal Circuit held that the original application did not describe the variants later claimed in the issued patent, noting in its decision that a patent “is not a reward for the search, but compensation for its successful conclusion.”
The U.S. Court of Appeals for the Federal Circuit dismissed for lack of Article III standing an appeal against Finnegan client Wisconsin Alumni Research Foundation (WARF) brought by consumer-advocacy organization Consumer Watchdog (CW). The appeal arose from an inter partes reexamination filed by CW against WARF’s U.S. Patent No. 7,029,913 (the ’913 patent) directed to human embryonic stem cell cultures. Following the reexamination, the Patent Trial and Appeal Board (PTAB) found the ’913 patent claims patentable over the asserted prior art, and CW appealed. On appeal, in a case of first impression, the Federal Circuit agreed with WARF and amici the United States and the U.S. Patent and Trademark Office that CW lacked standing to pursue its appeal. The Federal Circuit concluded that CW’s disagreement with the Board did not invade any legal right conferred by the inter partes reexamination statute and that CW had not identified any particularized, concrete interest in the patentability of the ’913 patent as, for example, a competitor, licensee, or stem-cell researcher. Because CW did not identify any injury in fact flowing from the Board’s decision, the Court dismissed its appeal for lack of standing.
Finnegan successfully represented Eli Lilly in connection with a lawsuit brought by Ariad Pharmaceuticals, accusing Lilly’s Xigris® product of infringing Ariad’s patent covering “NF-κB” technology. After a full en banc hearing, the U.S. Court of Appeals for the Federal Circuit held Ariad’s patent invalid under 35 U.S.C. § 112 for failing to comply with the written description requirement.
Finnegan represented GlaxoSmithKline (“GSK”) in various patent infringement litigations protecting GSK’s Paxil® antidepressant drug against many generic drug manufacturers that filed ANDA suits seeking to sell generic versions of the drug. Finnegan worked with GSK’s antitrust counsel to settle multiple litigations and minimize their antitrust risk. After one of those settlements, the generic drug manufacturer’s API supplier brought an antitrust suit challenging the settlement. Finnegan worked with GSK’s antitrust counsel to successfully defeat the antitrust claim in a motion to dismiss strongly upholding the right of patent owners to settle ANDA litigations. Finnegan also worked with GSK’s antitrust counsel in defending related class action antitrust suits brought by other litigants based on patent infringement litigations.
Andrx Pharmaceuticals, Inc. (“Andrx”) filed suit against Finnegan client Elan Corporation PLC, alleging that Elan violated the federal antitrust Sherman Act and various Florida antitrust statutes by entering into a settlement agreement in an Abbreviated New Drug Application (“ANDA”) patent infringement litigation that Elan brought against another company, and by initiating an ANDA litigation against Andrx relating to the same patent. Finnegan obtained judgment on the pleadings in Elan’s favor on all issues at the outset of the case. The U.S. Court of Appeals for the Eleventh Circuit affirmed the majority of the holdings, including that the Noerr-Pennington doctrine shielded Elan from Andrx’s patent misuse claims relating to Elan’s assertion of its patent against Andrx. The Eleventh Circuit remanded the settlement agreement holding for further proceedings. Andrx ultimately agreed to dismiss the claim.
Finnegan successfully represented Eli Lilly in a litigation against Genentech and the Regents of the University of California (UC) regarding Eli Lilly’s Humulin® insulin product, the first biotechnology product to be marketed in the United States. We obtained judgment, affirmed on appeal, that UC’s patents were either not infringed or invalid under the written description requirement of 35 U.S.C. § 112.
We represented the Institut Pasteur against the National Institutes of Health in an interference which sought to determine which party was first to discover the AIDS virus and to invent the AIDS antibody test kit. Ultimately, this high-profile, high-stakes interference was settled by the intervention of the President of the United States and the Prime Minister of France.  In another important interference for client Institut Pasteur, we challenged a patent owned by Chiron Corporation for a sensitive method of detecting HIV infection in human patients. The method has had widespread application in the diagnosis of such infections. Institut Pasteur succeeded in defending against Chiron’s attacks on its patent application and was awarded priority of invention by the PTO. This victory strengthened Institut Pasteur’s patent portfolio on HIV technology, which is licensed to benefit the public health and welfare.
The PTO initiated an interference between a patent application of Finnegan client Genetics Institute and a patent of Stryker Corporation. The PTO awarded judgment to Genetics Institute, thus resolving priority of invention to the disputed subject matter. The interference related to bone morphogenic proteins, which affect bone growth.
Finnegan represented CSL Behring in an ex parte reexamination and corresponding arbitration proceeding against Baxter and Bayer relating to Factor VIII blood products, securing a favorable settlement for our client.
We represented Wyeth against Genentech in an interference that related to the treatment of hemophilia. The successful result we achieved allowed Wyeth to secure patent rights to a protein, known as B-domain deleted Factor VIII, which is used to treat hemophilia.
Finnegan has represented many healthcare companies in transactions that included strategic counseling on antitrust and patent misuse issues. For example, Finnegan counseled Applera in its strategic settlement with Roche concerning PCR technology.
Finnegan successfully represented client DuPont Nutrition Systems in litigation involving generically engineering alpha-amylases proteins, enzymes used in a variety of industries to prepare commercial products like ethanol, sweeteners, and laundry detergent. Novozymes sued DuPont for infringing its patent and, on appeal, we successfully obtained a judgment that Novozymes’ patent was invalid under 35 U.S.C. § 112 for failing to comply with the written description requirement.
BrainCo, a company specializing in BMI (Brain Machine Interface) wearables, is working with Finnegan to develop its intellectual property strategy. A key component includes building a patent portfolio of innovations and designs related to BMI technologies that allow users to directly interact with electronic devices (including toys, smart home appliances, and robotic devices) by using brain signals.
Finnegan represented Eli Lilly in a landmark case brought by The Regents of University of California (UC). Two patents were at stake and both involved recombinant human insulin. UC claimed that its patents directed to DNA sequences that encode human proinsulin (a precursor to human insulin) covered Lilly's recombinant human insulin product. They argued that Lilly owed them hundreds of millions of dollars for infringing two of its patents. Finnegan succeeded in establishing that one patent was not valid and that the other patent was not infringed.