Teva Pharmaceuticals USA Inc. has agreed to suspend litigation over a compound patent for Eisai Co. Ltd.’s popular Alzheimer’s drug Aricept, thereby ending Teva’s attempts to manufacture and market a generic version of the drug before the patent expires in November.
Judge Garrett E. Brown Jr. of the U.S. District Court for the District of New Jersey signed off on the agreement Monday, and called for the case to be dismissed after the patent expires. However, the March 2008 preliminary injunction prohibiting Teva from manufacturing drugs including ingredients covered by the patent remains in effect.
Teva filed an abbreviated new drug application with the U.S. Food and Drug Administration in 2008, and, when sued by Eisai, initially claimed that the patent was invalid due to obviousness, and later changed defence to claim inequitable conduct.
Teva had asked for communications not related to the patent-in-suit, but to seven co-pending patent applications that it claimed Eisai failed to disclose to the patent examiner in charge of the application that led to its Aricept patent-in-suit.
In December, Magistrate Judge Esther Salas denied Teva’s motion to compel discovery for its inequitable conduct defense. Teva, which sought communications between Eisai and the U.S. Patent and Trademark Office, appealed to Judge Brown, but he affirmed Judge Salas’ order in June, that concluded that the generics maker’s discovery request was too broad and unduly burdensome.
Teva also sought discovery of communications between Eisai and the USPTO related to any abandoned patent applications that involved derivatives of benzylpiperidine, the active chemical in Aricept, on the grounds that they also might contain information to support the inequitable conduct defense. But Judge Salas said the patent applications were outside the scope of the companies’ current dispute and that expanding the search to include abandoned patent applications would “be a burden that outweighs the benefits to Teva.”
The patent-in-suit is U.S. Patent Number 4,895,841.
The case is Eisai Co. Ltd. et al. v. Teva Pharmaceuticals USA Inc. et al., case number 05-cv-05727, in the U.S. District Court for the District of New Jersey.