This article provides an update on our prior analysis of the infliximab litigation involving Janssen Biotech, Inc. (“Janssen”), Celltrion Healthcare Co. and Celltrion, Inc. (“Celltrion”), and Hospira Inc. (“Hospira”).

Briefly, when we last addressed this case, the litigation had already been narrowed to one patent, U.S. Patent No. 7,598,083 (“the ’083 patent”).  Further, there were two important developments with respect to the ’083 patent.  First, Celltrion alleged that Janssen did not have standing to bring suit on that patent because Janssen had failed to join all of the co-owners of the ’083 patent to the action.  Second, and relatedly, the Court provided “guidance” indicating that because the parties had never completed the ‘patent dance,’ 35 U.S.C § 271(e)(6) would not limit Janssen’s damages to a reasonable royalty in the event a future lawsuit was filed.

The parties proceeded to brief the questions of standing, with the Defendants filing a motion to compel evidence allegedly relevant to that question.  The case took a twist on May 31, 2017 (Dkt. 562), when Janssen informed the Court that it had filed a new lawsuit against Defendants, once again alleging infringement of the ’083 patent.  This was something that the Court had previously suggested.  Janssen contended that it was forced to file this lawsuit to preserve its rights because Celltrion had attempted to invoke the ‘patent dance’ with respect to the ’083 patent, triggering the deadline for filing a suit and preserving remedies under Section 271(e)(6).  Needless to say, Janssen contended that Defendants’ position was meritless, but stated it filed the lawsuit to eliminate any issue concerning its potential rights to future damages.  Moreover, Janssen explained that it executed a further assignment of the patent, mooting any standing issues.  Finally, Janssen stated that in light of these developments, it intended to dismiss the existing claims without prejudice to litigate the new lawsuit.

The following day, June 1, 2017, the Court held a telephone conference.  The docket indicates that the parties are to update the Court by June 16 in advance of a June 21, 2017 hearing.

Janssen’s new lawsuit is limited solely to the ’083 patent, with claims for infringement under Sections 271(a) and (b), as well as a claim for artificial infringement under 271(e)(2)(C).

Finally, the venue of the new lawsuit presents another potential quagmire, as Hospira is a Delaware corporation with a principal place of business in Illinois.  As such, in view of TC Heartland, Hospira may be able to argue that venue is improper in the new lawsuit.  Indeed, the new complaint goes out of its way to state that the defendants “did not contest venue in the 2015 action and the 2016 action,” perhaps setting up an argument that any such arguments are now waived.  Ultimately, this lawsuit will surely continue, regardless of any unique procedural developments.

We will continue to keep you apprised of further updates.