Hunton & Williams Secures Win for Teva Pharmaceuticals in Pfizer Patent Case

On March 12, 2014, a Virginia federal judge invalidated an important Pfizer Inc. reissue patent that covered methods for administering its arthritis drug Celebrex, thus exposing it to competition from generics. US District Judge Arenda L. Wright Allen said the patent was invalid under a doctrine that prohibits obtaining a new patent with claims not patentability distinct from previous patent claims. The patent had allowed Pfizer exclusivity over the drug until Dec. 2, 2015.

Pfizer, last year, sued generics makers, including Hunton & Williams client Teva Pharmaceuticals USA Inc. for patent infringement — the same day it received an 18-month extension from the US Patent and Trademark Office. Before last year’s suit, the generics had filed abbreviated new drug applications (ANDAs) with the FDA to market celecoxib, the active ingredient in Celebrex. According to the complaint, the generics told Pfizer they had filed the ANDAs, and that certain of Pfizer’s patents were unenforceable or wouldn’t be infringed by the generics.

Pfizer claimed the generics would infringe its reissue patent attempting to market generic Celebrex before the disputed patents and reissue patent expire, causing Pfizer “irreparable harm” according to the complaint. Pfizer sought a declaratory judgment of infringement against the generics, injunctions on the production of the generic, monetary damages, and attorneys’ fees and costs, among other penalties.

The Hunton & Williams legal team for Teva was led by Gregory N. Stillman and included Wendy Cohen McGraw, Sonja Garrelts, and Brent VanNorman (now COO of TriLinc Global).