ALTANA PHARMA AG v. TEVA PHARMACEUTICALS USA INC
2:04-cv-02355
D.N.J.Mar 26, 2013Background
- This is a patent infringement action concerning U.S. Patent No. 4,758,579 on pantoprazole (Protonix).
- Altana Pharma AG owns the patent; Wyeth markets Protonix in the U.S. as Nycomed's exclusive licensee.
- Defendants Teva, Sun, and KUDCo filed ANDAs to sell generic pantoprazole; the case proceeded to trial on validity/damages issues.
- Nycomed financed Altana’s acquisition via a loan package; Germany Holding was a party to the loan but Altana was not.
- Altana seeks consequential damages of $99.6 million representing debt restructuring costs paid by Germany Holding; the court addresses standing to recover those damages.
- Nycomed’s leveraged debt restructuring occurred after infringement and is alleged to be caused by the patent infringement.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Altana has standing to recover Germany Holding’s debt-restructuring costs. | Altana argues Organschaft makes Altana and Germany Holding a single economic entity. | Teva and Sun contend Altana is a separate entity and lacks standing. | Altana lacks standing; damages cannot be recovered. |
| Whether the alleged affiliation permits recovery of affiliate damages under exceptional circumstances. | Altana cites Poly-America and Mars to support possible recovery. | Court should not extend standing to affiliate damages in this case. | No exceptional circumstances found; no standing to recover affiliate damages. |
| Whether the damages are proximately/actually caused by the infringement. | Not reached because standing is lacking. |
Key Cases Cited
- Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359 (Fed. Cir. 2008) (affiliate damages intercompany limitations on recovery)
- Poly-America, L.P. v. GSE Lining Tech., 383 F.3d 1303 (Fed. Cir. 2004) (standing to recover affiliate damages may be limited by corporate structure)
- Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305 (Fed. Cir. 2010) (parent/affiliate profits may not be recovered as damages)
- Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538 (Fed. Cir. 1995) (damages framework under 35 U.S.C. § 284 expansive rather than limiting)
- Gen. Motors Corp. v. Devex Corp., 461 U.S. 648 (Supreme Court 1983) (damages must fully compensate for infringement)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (Supreme Court 1986) (summary judgment standard: no genuine dispute of material fact)