ALTANA PHARMA AG v. TEVA PHARMACEUTICALS USA INC
2:04-cv-02355
D.N.J.Dec 20, 2012Background
- Patents and parties: Nycomed owns the '579 patent; Wyeth markets Protonix under Nycomed's license.
- Protonix approved Feb 2, 2000; generic ANDAs filed by Teva, Sun, and KUDCo.
- Sun and Teva launched generics before verdict; patent expired July 19, 2010; pediatric exclusivity through Jan 19, 2011.
- Sun seeks partial summary judgment to bar damages before Jan 30, 2008, the Sun launch date.
- Plaintiffs seek damages including lost profits and price erosion; issues include pre-launch importation and Caraco’s role.
- Court denies Sun's motion, finding genuine disputes of material fact regarding pre-launch damages and Caraco’s agency/offers to sell actions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether pre-launch Sun actions support pre-January 30, 2008 price erosion damages | Plaintiffs show importation and price erosion causation before Jan 30, 2008 | Pre-launch activities caused no damages or not within infringement scope | Genuine dispute of material fact; pre-launch damages not summarily resolved |
| Whether Caraco's pre-launch activities were Sun's agent for liability | Caraco acted as Sun's agent before Jan 30, 2008 | Agency not established; Caraco claimed lack of authorization | Genuine dispute of material fact about agency; liability not decided |
| Whether Caraco's pre-Jan 30, 2008 communications constitute offers to sell under §271(a) | Caraco communications could be offers to sell | Such communications were not offers to sell, or not proven as such | Genuine dispute; could be construed as offers to sell under law |
Key Cases Cited
- Phoenix Canada Oil Co. Ltd. v. Texaco, Inc., 842 F.2d 1466 (3d Cir. 1988) (agency principles; when parent liable for agent actions depends on relationship and authority)
- Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555 (Fed. Cir. 1992) (causation in damages is a jury question; premarketing actions may cause losses)
- 3D Sys., Inc. v. Aarotech Labs., Inc., 160 F.3d 1373 (Fed. Cir. 1998) (price quotation letters can be offers to sell under § 271(a))
- MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369 (Fed. Cir. 2005) (affects interpretation of offers to sell and related infringement)
- Erickson, Inc. v. Harris Corp., 352 F.3d 1369 (Fed. Cir. 2003) (but-for causation required for price erosion damages)