Teva, Purdue Put OxyContin Litigation Behind Them - Law360
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`Teva, Purdue Put OxyContin Litigation Behind Them - Law360
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`http://www.law360.com/articles/11886/teva-purdue-put-oxycontin-litigat...
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`Teva, Purdue Put OxyContin Litigation Behind
`Them
`
`Share us on: By Lindsay Fortado
`
`Law360, New York (October 16, 2006, 12:00 AM ET) -- A federal judge has signed off on the settlement
`agreement over a generic version of painkiller OxyContin between generic drug maker Teva Pharmaceuticals
`Industries Ltd. and Purdue Pharma LP, bringing pending litigation to an end.
`
`Israel-based Teva was given a full release from the litigation and Stamford, Conn.-based pharmaceutical
`Purdue will not seek damages for past infringement, the companies said.
`
`Under the terms of the settlement agreement, Teva will cease selling oxycodone products at an unspecified
`future date. Teva said that it anticipates sales of its generic OxyContin at least until March 31, 2007.
`
`“We are pleased that Teva will respect our invention of an important medicine,” said Michael Friedman,
`president and chief executive officer of Purdue Pharma LP.
`
`“I believe we would have prevailed in our lawsuit and the court eventually would have ordered Teva to stop
`selling its infringing product. Because of today’s agreement, we no longer have to wait for a trial, and
`possible appeals, in order to secure the result provided in the agreement. We have avoided the risks,
`uncertainty and costs of continued litigation.”
`
`The settlement agreement became effective on Monday. The terms were revealed by the companies on
`August 29, 2006, but were still awaiting the approval of the United States District Court for the Southern
`District of New York.
`
`Also on August 29, in another patent infringement suit involving the $2 billion-a-year painkiller, Purdue
`stated it had settled another case over a copycat version of OxyContin. The settlement with generic maker
`Endo Pharmaceuticals stipulated that Endo must stop producing the drug.
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`Teva, Purdue Put OxyContin Litigation Behind Them - Law360
`
`http://www.law360.com/articles/11886/teva-purdue-put-oxycontin-litigat...
`
`Endo has agreed to stop selling its generic by the end of 2006, and in exchange, Purdue has agreed not to
`pursue damages for past infringements, Purdue said.
`
`The litigation to protect three OxyContin patents has been rife with pitfalls for Purdue.
`
`In a surprising turnaround in February, the U.S. Court of Appeals for the Federal Circuit vacated its earlier
`ruling that Purdue Pharma’s patents for the blockbuster painkiller OxyContin were unenforceable, throwing
`the case back to the lower court for reconsideration.
`
`On February 1, the Federal Circuit reversed itself, handing the U.S. District Court for the Southern District of
`New York authority to decide the fate of the patent battle between Purdue and Endo.
`
`The decision gave Purdue another chance to defend the three patents behind OxyContin, which earns over
`75% of the company’s revenue.
`
`The ruling put into jeopardy the sale of Endo’s generic version of the painkiller, which had already netted the
`company $80 million.
`
`The turnaround in the case stemmed from Purdue asking the Federal Circuit in July 2005 to review its
`decision the previous month to uphold a lower court’s determination that the three patents were
`unenforceable due to inequitable conduct before the U.S. Patent and Trademark Office.
`
`The petition sought an en banc rehearing by the full panel of judges of the court following a three-judge
`panel’s unanimous affirmation of a decision by the U.S. District Court for the Southern District of New York.
`
`Endo, which won the Federal Circuit case, said it had been asked to file a response brief in the case.
`
`Endo used the court’s fraud finding as the basis of a lawsuit seeking to prevent Purdue from introducing its
`own “authorized generic” version of OxyContin.
`
`In June 2005, the Federal Circuit upheld a January 2004 ruling from U.S. District Court Judge Sidney Stein
`in the Southern District of New York. Judge Stein said that Purdue repeatedly referred to a “surprising
`discovery” during its patent prosecution, but did not inform the USPTO that the discovery was based on
`"insight" without "scientific proof.”
`
`The appeals court agreed with the lower court that Purdue's applications led the patent office to believe
`Purdue had evidence the oxycodone formula was more effective than other opiates.
`
`“Purdue had no clinical evidence supporting its claim at the time it was made or at any time before the
`patents issued,” the Federal Circuit concluded.
`
`Related Articles
`
`Purdue Fends Off Generic OxyContin Competition
`Federal Circuit Slams Purdue With Inequitable Conduct Finding In OxyContent Patent Suit
`Endo Gets 180-Day Market Exclusivity For OxyContin
`Purdue Pharma Strikes Licensing Deal For OxyContin
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`Teva, Purdue Put OxyContin Litigation Behind Them - Law360
`
`http://www.law360.com/articles/11886/teva-purdue-put-oxycontin-litigat...
`
`OxyContin Given New Lease On Life By Federal Circuit
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