The recent patent litigation suit, with the highest ever damage claim against an Indian pharmaceutical company, is likely to end in a whimper.
Sun Pharma, which was slapped with a $960-million damage notice by US-based Wyeth over the launch of the generic Protonix, may settle for an out-of-court settlement.
According to patent attorneys, if Sun Pharma moves the court of appeal under the Federal circuit and loses the case, it would have to pay an additional amount besides the claim of $960 million.
A Mumbai-based patent attorney said, "Wyeth's move after three years of the generic's launch will hurt Sun Pharma financially. The best option for the company would be an out-of-court settlement." Wyeth has made a triple damage claim against Sun Pharma for willful patent infringement. A triple damage claim is equal to three times the amount of actual damages (loss of profit).
A Sun Pharma spokesperson said, “Once the case is completed at the lower court, appeal is certainly an option.”
"Sun Pharma had launched this product in January 2008. It earned a revenue of $250-260 million and withdrew the generic drug from the market in April 2010 once it lost the case in a district court," said a report by Edelweiss.
US-based patent attorney Mark Pohl said, "A US court had already found the patent is valid and Sun and Teva infringed it. Sun now says they have arguments and legal defenses, but if those legal defenses are so strong, why did Sun not use them in court till the latest claim by Wyeth?"
In April 2010, a jury in the Federal court in New Jersey found the Protonix patent valid and was infringed upon by Teva’s and Sun’s generic products. The jury’s verdict was upheld by the District Court.
This is a rare development for an Indian pharma company as Sun Pharma went ahead with marketing the product before the court came to any conclusions, and thus Sun has a narrow chance of winning, say attorneys, citing the example of Apotex's at-risk launch of Plavix.
“I have no reason to expect Wyeth lawyers to agree to a discount as they fought a battle and won. If Sun wanted leverage to demand a discount, it should have done so before losing in court," Pohl added.
However, another similar suit in support of Sun and Teva has been pending in a US court. On December 26, 2007, attorneys working with a consumer forum - Prescription Access Litigation (PAL) - filed a class action lawsuit against Altana, Nycomed and Wyeth (makers of Protonix), for not allowing lower-priced generic versions from reaching the market. On February 1, 2008 the lawsuit was stayed pending completion of discovery in the underlying patent litigation.
"The pending case filed by PAL may step up the ongoing litigation between Sun and Wyeth," said Gopakumar Nair, a Mumbai-based patent attorney.
(The story was modified to correct a mistake)
Our report published on February 22 wrongly stated that Apotex's at-risk launch of Plavix cost its chief IP counsel his job. We understand that Apotex's chief IP counsel did not lose his job because of the at-risk launch of Plavix. The error is regretted.