Case Briefing

The U.S. District Court for the Northern District of Illinois, Eastern Division, denied defendant's motion to dismiss this suit as plaintiff ANDA applicant established a reasonable apprehension that it would be sued for patent infringement. Teva Pharamaceuticals USA Inc. v. Abbott Laboratories, No. 03 C 5455, 2004 U.S. Dist. LEXIS 274 (1/9/04).

Plaintiff Teva filed this action seeking a declaratory judgment that three patents held by defendant, Abbott Laboratories, were invalid and would not be infringed if Teva commercially marketed a generic version of Abbott's antibiotic BIAXIN. Abbott moved for dismissal, citing lack of subject matter jurisdiction and claiming that no justiciable case or controversy existed at the time Teva filed its suit. Teva countered that it reasonably apprehended a patent infringement suit by Abbott based on three factors: 1) Abbott commenced proceedings in Canada under the Patented Medicines (Notice of Compliance) Regulations against Novopharm, a Teva affiliate, in connection with Novopharm's attempt to obtain approval to market generic versions of BIAXIN in Canada; 2) Abbott refused to covenant that it would not enforce its patent rights against Teva; and, 3) Abbott has a history of patent enforcement against Teva concerning Teva's efforts to market generic versions of Abbott's brand name drugs. Abbott denied that these factors gave Teva any reasonable apprehension of a patent infringement suit.