by: Joseph Carnicella, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.
In Wellbutrin SR Antitrust Litigation; Medical Mutual of Ohio, Inc. v. GlaxoSmithKline PLC, et al., Nos. 04-5525, 05-396, 2010 U.S. Dist. LEXIS 90156 (E.D. Pa. Aug. 31, 2010) (opinion by J. Stengel), GlaxoSmithKline PLC, et al. (“GSK”) filed a renewed motion for summary judgment arguing that an entire lawsuit cannot be objectively baseless if a “non-sham” claim is asserted with a “sham” claim together in the same lawsuit. The filing of the renewed motion was prompted by a decision from the court on March 31, 2010, when the court found that GSK had probable cause to file suit alleging infringement of the ‘994 Patent (the “non-sham” claim) but that a genuine issue of material fact precluded a finding that GSK also had probable cause to file suit alleging infringement of the ‘798 Patent (the “sham” claim).
By way of background, the issues relating to this case began in July 2000, when Eon, a generic drug manufacturer, submitted an abbreviated new drug application for generic Wellbutrin SR, and in the application, Eon stated that it had not infringed the ‘798 Patent. On November 29, 2000, GSK filed suit against Eon alleging infringement of the ‘798 and ‘994 Patents, which triggered a 30-month stay precluding Eon from marketing its generic version of Wellbutrin. On January 24, 2002, the FDA granted tentative approval to the generic Wellbutrin, which meant that the FDA would have granted approval for marketing the drug but for the 30-month stay. On August 13, 2002, the court denied Eon’s motion for summary judgment on the ‘798 Patent and granted Eon’s motion for summary judgment on the ‘994 Patent. GSK eventually settled its ‘798 infringement claim against Eon. In November 2003, after the 30-month stay expired, Eon received FDA approval for the generic Wellbutrin; however, GSK obtained a temporary restraining order and preliminary injunction preventing Eon from marketing the drug before the trial on the ‘798 claim. In January 2004, the Federal Circuit stayed the injunction, and Eon began marketing its generic drug.
As part of its argument to support the renewed motion, GSK asserted that, because the court found previously that GSK had a reasonable basis for filing the ‘994 claim and because the ‘994 claim and the ‘798 claim were both included in one lawsuit, the court must find that GSK had a reasonable basis to file the lawsuit. GSK relied on only a few cases in an attempt to support its overall position. GSK then directed the court to its own language in the summary judgment opinion and attempted to craft the issue as whether the facts and the law as they were when GSK filed suit against Eon would have given GSK a reasonable expectation of success. Specifically, GSK argued that because the court already found that GSK had a reasonable expectation of success as to the ‘994 claim at the time the lawsuit was filed, the court must find that any lack of reasonable expectation of success on the ‘798 claims had no bearing on the sham litigation claim.
The court acknowledged that GSK’s argument was novel and creative but ultimately disagreed with GSK. The court concluded that an argument that the language in the opinion indicated that success on one claim would end Plaintiffs’ suit ignored the underlying facts relating to the opinion. The summary judgment opinion included language about the facts and the law that was directed to each patent claim, the court issued two separate judgments and the court analyzed GSK’s reasonable expectations of success on each claim, which resulted in two separate conclusions. In the end, the court agreed with Plaintiffs that a dismissal of the claims would have ignored the fact that the ‘798 claim, in and of itself, was sufficient to cause antitrust damage because that claim resulted in the continuation of GSK’s 30-month protection stay after the ‘994 claim was dismissed on summary judgment.
As an alternative argument, GSK asserted that the damage period should not have included any time prior to the date when the court dismissed the ‘994 Patent claim that was filed against Eon. The court denied GSK’s motion to limit the damages period and agreed with Plaintiffs that the issue was an issue to be submitted to the jury.
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