May 30, 2020

May 29, 2020

Subscribe to Latest Legal News and Analysis

May 28, 2020

Subscribe to Latest Legal News and Analysis

May 27, 2020

Subscribe to Latest Legal News and Analysis

Final Judgment Prescribed For Antibody Patent After Double Patenting Decision

We previously wrote about Judge Wolf’s decision to invalidate Janssen Biotech, Inc.’s (“Janssen”) biopharmaceutical patent (U.S. Patent No. 6,284,471 (the “’471 Patent”)), based on the doctrine of obviousness-type double patenting.

Celltrion Healthcare Co. Inc. (“Celltrion”) subsequently moved the court for an entry of final judgment dismissing Janssen’s infringement claims premised on the ’471 Patent.  While Celltrion’s request may seem straightforward given that the court invalidated the ’471 Patent, it was not a guarantee.  Other claims still remain in the case, and under Fed. R. Civ. P. 54(b), the court “may” enter a final judgment dismissing less than all claims in the action only if it determines “that there is no just reason for delay.”

Patent, New England, ScientistJanssen opposed Celltrion’s motion, arguing that there was such a “just reason” for delay:  specifically, that the ’471 Patent is still in a reexamination proceeding at the Patent Office, the results of which could require the court to reverse its invalidity decision.  At the Patent Office, Janssen seeks to change the characterization of the ’471 Patent’s application from a continuation-in-part to a divisional.  According to Janssen, this would entitle the ’471 Patent to the “safe harbor” provision, potentially shielding the patent from an obviousness determination.

The court, however, disagreed and granted Celltrion’s motion for an entry of final judgment. It found that the reexamination proceeding would not affect its decision to invalidate the ’471 Patent even if Janssen obtains the relief it seeks. Indeed, even if the Patent Office changed the patent’s designation to a divisional, the “nature” of the patent would still be a continuation-in-part, because, when it was filed, the patent application contained new material.

The court also cited public interest reasons to grant final judgment now. Celltrion was to offer for sale a generic drug to treat chronic pain. To the court, delaying judgment could “unfairly deprive[]” individuals from obtaining “a more affordable alternative” to Janssen’s patented medication.

The case is Janssen Biotech, Inc. et al. v. Celltrion Healthcare Co. Inc., No. 15-10698-MLW, pending in the District of Massachusetts.  A copy of the opinion can be found here.

© 2020 Proskauer Rose LLP.


About this Author

Gourdin W. Sirles, Proskauer Rose, Litigation Lawyer, Patent Law, IP

Gourdin W. Sirles is an associate in the Litigation Department.

Gourdin's practice focuses on Patent Law and Intellectual property, but also encompasses a variety of complex legal matters, including bankruptcy law, employment litigation, commercial disputes, and campaign finance compliance and other election-related laws on the state and federal level.

Gourdin has experience in all aspects of patent litigation, including trials, Markman hearings, fact and expert discovery, depositions, case preparation and strategy,...