Behind the Case: How Finnegan Helped Eli Lilly Swerve a $176.5M Patent Headache

A team of Finnegan attorneys led by partners Danielle Duszczyszyn and Bill Raich helped client Eli Lilly overturn a substantial damages award related to its migraine drug. The pair spoke with Managing Intellectual Property to detail their strategy and how they won the case.

How did you secure this work?

Duszczyszyn: This litigation is connected to some earlier matters.

Teva filed a lawsuit in the Massachusetts court in October 2017. We moved to dismiss that litigation because we believed it was premature and lacked subject matter jurisdiction since Lilly’s product hadn’t even been approved yet.

The judge agreed with us and dismissed that case on September 27, 2018. This was the same day that Lilly’s product was approved by the Food and Drug Association. So, hours later Teva filed this lawsuit.

Did you have to convince the client to put you on the lawsuit, or were they ready to engage you?

Raich: I think we had the inside track from the beginning based on our longstanding, positive relationship with the client but also because it came up so quickly when Teva filed the lawsuit so early on.

What was the key to victory in this matter?

Raich: We believed that Teva’s patents were overly broad and that was the consistent argument in our challenges to those patents over time. Ultimately, we were able to convince the judge that the patents’ claims were too broad. It really was a long-term collaborative process of working with the attorneys at Lilly to achieve this result.

What were the biggest challenges of this case?

Raich: As with many cases in the pharmaceutical space, the technology is just complicated and there’s a lot of lingo and a lot of words that are not concepts that people deal with in regular life. That inherently creates a challenge in explaining the technology and legal principles.

Duszczyszyn: There was a stay in place while there was some pending inter partes review proceedings. So, our case really only started in earnest right when the pandemic was at its peak and everything had shut down.

Normally in a litigation, you tend to have more opportunities to find yourself in front of a judge. So you have the opportunity to tell your story and start educating the judge earlier on.

Here, that was happening less frequently and so part of [the case] was trying to do that through some of our early paper submissions to start previewing to the judge what our positions were.

We also had the jury to contend with. And it’s just a really complicated subject matter for the jury to grapple with.

So, we were able to use a lot of our post-trial submissions to further bring to the judges’ attention all the longstanding case law and also recent case law that really supports the reason why the patents were too broad.

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