Judge Thomas W. Thrash of the US District Court for the Northern District of Georgia dismissed claims brought by purchasers of the testosterone-replacement drug AndroGel alleging that several drug companies settled sham patent infringement actions to delay generic competition to the drug.
In a victory for drug companies Solvay Pharmaceuticals Inc. (the holder of the new drug application for AndroGel), Watson Pharmaceuticals Inc., Par Pharmaceuticals Inc., and Paddock Laboratories Inc., Judge Thrash granted the generic company defendants' motion for summary judgment, concluding that the underlying patent infringement suit was not objectively baseless and did not constitute unprotected sham litigation.
Eric Grannon of White & Case LLP, Washington, who represents Par and Paddock, told BNA, "Our briefs and discovery strategy throughout focused on a refusal to engage in de novo re-litigation of the patent merits, but instead to demonstrate that the record of the three-year patent litigation indisputably evidenced a real fight that either side could have won."
And Grannon said, "We not only saved our clients lots of money, we drove home the theme that it is the record of the underlying case that matters."
"The efficacy of this approach seems to have been borne out in the court's decision," he added. "When class plaintiffs tack on sham claims to sidestep the scope of the patent test for alleged reverse payment settlements, defendants nonetheless have strong tools available to beat back those 'sham' sham claims."
In addition to Grannon, J. Mark Gidley, Meytal McCoy and Mika Ikeda, of White & Case LLP, Washington, also represented Par and Paddock.