ALTANA PHARMA AG v. TEVA PHARMACEUTICALS USA INC
2:04-cv-02355
| D.N.J. | Nov 5, 2012Background
- This is a patent infringement case over U.S. Patent No. 4,758,579 covering pantoprazole and pantoprazole sodium, the active ingredient in Protonix.
- Nycomed owns the patent; Wyeth markets Protonix in the U.S. under an exclusive license from Nycomed.
- Defendants Teva, Sun, and KUDCo filed ANDAs; Wyeth began selling infringing pantoprazole products after trial and before judgment in this litigation.
- A jury trial addressed validity defenses; the court later held KUDCo’s claims of invalidity unfounded; the patent expired July 19, 2010.
- Nycomed seeks damages for lost profits and/or reasonable royalties under 35 U.S.C. § 284; Nycomed argues profits flowed from Wyeth’s sales, which Nycomed royalties cover.
- Defendants move for partial summary judgment to preclude Nycomed from recovering lost profits, arguing Nycomed sold no competing finished drug product and profits were generated only through Wyeth’s sales.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Nycomed may recover lost profits damages | Nycomed profits depend on Wyeth sales; substantial competition by Wyeth in the same market. | Nycomed did not sell a finished drug; no direct competition with infringing product; lost profits barred. | Nycomed cannot recover lost profits; damages limited to reasonable royalty. |
| Whether the license arrangement defeats lost profits despite royalties | Royalties from Wyeth (25%) reflect Nycomed’s profits; lost profits flow from Wyeth’s sales. | Even with royalties, Nycomed has not shown direct, culpable loss of profits from its own sales; threshold requirement unmet. | Threshold for lost profits not met; damages to Nycomed must be royalties under § 284. |
Key Cases Cited
- Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538 (Fed. Cir. 1995) (damages must be adequate; not limited to a fixed scope)
- Gen. Motors Corp. v. Devex Corp., 461 U.S. 648 (U.S. 1983) (but-for damages aim to compensate full injury from infringement)
- Panduit Corp. v. Stahlin Bros. Fibre Works, 575 F.2d 1152 (6th Cir. 1978) (four-factor test for but-for causation in lost profits)
- Kearns v. Chrysler Corp., 32 F.3d 1541 (Fed. Cir. 1994) ( Panduit as one method to show but-for causation)
- Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359 (Fed. Cir. 2008) (lost profits require patentee to show sale of item whose profits were lost)
- Poly-America, L.P. v. GSE Lining Tech., 383 F.3d 1303 (Fed. Cir. 2004) (royalties to related entity can prevent artificial loss of profits)