Labeling and Induced Infringement in Pharma Patent Litigation and Protecting IP Rights

A live 90-minute premium CLE webinar with interactive Q&A


Tuesday, October 8, 2019

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

or call 1-800-926-7926

This CLE webinar will guide patent counsel on the implications of recent cases on litigation strategies and discuss strategic considerations of label language.

Description

A drug label may prove significant in Hatch-Waxman patent litigation, particularly concerning induced infringement of method-of-use patent claims.

35 U.S.C. 271(b) requires that the accused "actively induces infringement." As the Supreme Court explained a several years ago in Global-Tech v. SEB (U.S. 2011), "actively induces infringement" means the accused knew of the patent and knew the induced acts were infringing. In Hatch-Waxman litigation, the patents listed in the Orange Book and the generic manufacturer's paragraph IV certification demonstrate the first prong of Global-Tech. The second prong of specific intent to induce infringement may be proven by the drug label instructions and information.

In Eli Lilly and Co. v. Teva Parenteral Medicines Inc. (Fed. Cir. 2017), the Federal Circuit found direct infringement attributable to physicians. The court found the defendants liable for inducing that infringement due to "evidence that the product labeling that Defendants seek would inevitably lead some physicians to infringe establishe[d] the requisite intent for inducement."

In Sanofi v. Watson (Fed. Cir. 2017), a case in which the claim tracked the label precisely, the Federal Circuit relied on the label in finding the specific intent required to encourage an infringing use. Evidence of substantial non-infringing uses was not relevant to the inducement inquiry.

In Vanda Pharm. v. West-ward Pharm. Int'l (Fed. Cir. 2018), the Federal Circuit found induced infringement based on the proposed label and explained how, in the Hatch-Waxman pre-launch context, actual past direct infringement does not have to be shown. Moreover, "patentees in Hatch-Waxman litigations asserting method patents do not have to prove that prior use of the NDA-approved drug satisfies the limitations of the asserted claims." The court also cited Sanofi when the alleged infringer tried to rely on evidence of substantial non-infringing uses.

The Federal Circuit has heard arguments and is considering inducement to infringe in a post-launch setting in GSK v. Teva, No. 18-1976, argued Sept. 4, 2019 (appeal of 1-14-cv-00878, D. Del). In the district court decision, Judge Stark noted that in a post-launch context, the patent owner must prove actual inducement.

Listen as our authoritative panel of patent attorneys discusses the implications of Lilly and label language for induced infringement. The Orange Book listed patent's label may be written so that the generic manufacturer is more vulnerable to a finding of induced infringement. The panel will offer guidance on strategic considerations and best practices for label language.

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Outline

  1. Implications of Lilly for induced infringement
  2. Other Federal Circuit induced infringement decisions post-Commil
  3. Strategic considerations of label language for induced infringement, including applying the teachings of Sanofi and Vanda.

Benefits

The panel will review these and other noteworthy issues:

  • What impact will recent decisions have on proving induced infringement?
  • What impact will recent decisions have on claim drafting?
  • What strategic considerations should patent owners keep in mind when labeling drugs?

Faculty

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Rudolph, Barbara
Barbara R. Rudolph, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Rudolph has successfully litigated complex Hatch-Waxman Paragraph IV Abbreviated New Drug Application and...  |  Read More

Cyr, Shana
Shana K. Cyr, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Cyr represents clients in complex patent litigations, contentious proceedings before the USPTO, and appeals related...  |  Read More

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