•     By James DeGiulio —

    Athersys On
    February 9th, Athersys, Inc. was issued U.S. Patent No. 7,659,118 covering

    multipotent adult stem cells (MASC), their isolation and expansion, and related
    pharmaceutical compositions
    .  In a February 10, 2010 press release, the Cleveland-based company also announced the grant of European
    patent EP 1 218 489 B1, the counterpart to the
    '118 patent.  Athersys adds these patents to an already
    robust patent portfolio covering its stem cell technology, which includes fourteen
    patents and more than 120 global patent applications.

    Both
    the '118 and '489 patents cover the company's MultiStem technology, which is an investigational
    stem cell therapy that has demonstrated therapeutic potential to treat a range
    of problems, including heart attack, stroke, bone marrow transplant rejection, and inflammatory bowel disease.
      MultiStem has the ability to produce a range
    of factors and form multiple cell types.  MultiStem promotes tissue repair and
    healing in multiple ways, such as through the production of multiple
    therapeutic factors produced in response to signals of inflammation and tissue
    damage.
      Unlike traditional stem cell therapies
    that aim to replace damaged tissue, MultiStem produces factors that regulate
    the immune system, protect damaged or injured cells, and promote tissue repair
    and healing, giving the therapy a more drug-like effect.
      Thus, the company believes that
    MultiStem represents a unique "off-the-shelf" stem cell product.

    The '118 patent describes the advantages of using cells from the developed
    individual rather than an embryo, specifically overcoming the problem of tissue
    incompatibility.  The claimed MASC
    are negative for many common antigens, including CD44, CD45, and HLA class I
    and II.  The MASC express
    transcription factors Oct3/4, REX-1, and ROX-1, express telomerase, and respond
    to the growth factor LIF.  The patent
    describes the method of MASC isolation from human bone marrow, after which the
    MASC can be maintained in undifferentiated state or differentiated into several
    cell types, depending on desired use.  The MASC are also suited for ex vivo
    genetic alteration prior to introduction or engraftment into a human patient.  The MASC are described as efficient for a number of uses, including cancer
    treatment, tissue damage repair, induction of immune responses to fight
    infection, and cardiovascular therapy.  The patent contains 11 examples, which
    describe the isolation, differentiation, development, characterization, and
    engraftment of the cells.

    Both
    the U.S. and European patents claim the MASCs and pharmaceutical compositions, as well
    as methods for their production.  The '489 patent contains 21 claims, additionally claiming the use
    of the MASC for agent screening applications.  The '118 patent contains 12 claims; representative
    claims include:

    1.  A cell culture comprising isolated expanded human multipotent, non-embryonic,
    non-germ cells that can differentiate into at least one cell type of each of
    the endodermal, ectodermal, and mesodermal embryonic lineages and express
    telomerase, said cells having undergone at least 10-40 cell doublings in culture.

    9.  A pharmaceutical composition comprising a pharmaceutically acceptable carrier
    and isolated expanded human multipotent, non-embryonic, non-germ cells that can
    differentiate into at least one cell type of each of the endodermal,
    ectodermal, and mesodermal embryonic lineages and express telomerase, said
    cells having undergone at least 10-40 cell doublings in culture, said cells
    obtained from the cell culture of claim 1 or 2.

    10.  A method for making a pharmaceutical composition comprising admixing a pharmaceutically
    acceptable carrier and isolated expanded human multipotent, non-embryonic, non-germ
    cells that can differentiate into at least one cell type of each of the
    endodermal, ectodermal, and mesodermal embryonic lineages and express
    telomerase, said cells having undergone at least 10-40 cell doublings in
    culture, said cells obtained from the cell culture of claim 1 or 2.

    Pfizer In a December 2009 press release, Athersys
    announced
    a strategic
    partnership with Pfizer under which the companies will jointly develop
    MultiStem for
    inflammatory
    bowel disease
    , and a partnership with Angiotech to develop
    MultiStem in acute myocardial infarction and other cardiovascular
    indications. 
    Athersys is still seeking
    partners to develop MultiStem for stroke victims as well as leukemia patients
    who have rejected bone marrow treatments.

    Angiotech On
    February 16, 2010, Athersys, Inc. announced that it has completed patient
    enrollment for its phase I clinical trial which will test administration of
    Multistem to individuals following acute myocardial infarction.

    James
    DeGiulio has a doctorate in molecular biology and genetics from
    Northwestern University and
    is a third-year law
    student at the Northwestern University School of Law.  Dr. DeGiulio
    was a member of MBHB's 2009 class of summer associates, and he can be
    contacted at degiulio@mbhb.com.

  •     By
    Sarah Fendrick —

    USPTO Seal Last
    month, the U.S. Patent and Trademark Office released the first issue of
    inventorseye.  Inventorseye is a bimonthly publication
    released by the USPTO in an effort to provide the necessary resources for an
    independent inventor.  The
    electronic publication provides information on events, organizations, and
    meetings of interest to the independent inventor community as well as issues
    that pertain to independent and small entity inventors.

    The
    first issue of inventorseye includes information on how to avoid scams relating
    to obtaining protection for an invention, tips on how to get started in the
    patent protection process, and a letter from the USPTO Director, David Kappos, addressing
    patent reform and its effect on the independent inventor.

    Individuals
    interested in receiving inventorseye can subscribe here.

    Inventorseye

  • Calendar

    March
    9, 2010 –
    "Patent
    Infringement
    Claims, Opinions of Counsel and Attorney-Client Privilege: Best
    Practices for Opinion Letters after Seagate
    and Qualcomm
    " (
    Technology
    Transfer
    Tactics & Strafford) –
    1:00
    – 2:30 PM (EST)

    March 17-18, 2010 – 18th
    Forum on Biotech Patenting
    (C5) –
    Munich,
    Germany

    March 18-19, 2010 – 4th
    Summit on Biosimilars and
    Follow-on Biologics
    *** (
    Center for
    Business Intelligence) –
    Washington, DC

    March
    22-23, 2010
    – 4th
    Annual Patent Law Institute
    (
    Practising
    Law Institute) –
    San Francisco,
    CA

    March 24-25, 2010 – FDA
    Boot Camp
    *** (
    American Conference
    Institute) –
    New York, NY

    March
    30,
    2010 – "The
    Bilski Decision: Expert Strategies to Manage Its Impact on
    University IP
    "
    (Technology
    Transfer Tactics) –
    1:00 – 2:30 PM (EST)

    April
    7, 2010 –
    First
    Annual Board
    Conference
    (
    U.S.
    Patent and Trademark Office
    Board
    of Patent
    Appeals and Interferences) –
    Alexandria,
    VA

    April
    7-10, 2010 –
    25th
    Annual
    Intellectual Property Law Conference
    (
    American
    Bar
    Association Section of Intellectual Property Law) –
    Arlington,
    VA

    April
    11-17, 2010 –
    Advanced
    Patent Courses
    (
    Patent
    Resources
    Group) –
    Bonita
    Springs, FL

    April
    23-24, 2010 –
    12th
    Comprehensive PCT Seminar
    (
    Franklin Pierce Law Center & World Intellectual Property
    Organization) –
    Concord,
    NH

    April 27-28, 2010 – 4th
    Annual Paragraph IV Disputes
    *** (
    American Conference
    Institute) –
    New York, NY

    April
    27-28, 2010 –
    Corporate
    IP Counsel Summit
    (
    World
    Research
    Group) –
    New
    York, NY

    April
    29,
    2010 –
    26th
    Annual Joint Patent Practice Seminar
    (
    Connecticut,
    New
    Jersey, New York, and Philadelphia Intellectual Property Law
    Associations) – New York, NY

    ***Patent Docs is a media partner of this conference or CLE

  • WIPO The
    Franklin Pierce Law Center and the World Intellectual Property Organization
    (WIPO) will be holding the 12th Comprehensive PCT Seminar on April 23-24, 2010
    in Concord, NH.  The two-day
    seminar will provide participants with in-depth knowledge and understanding of
    the PCT, and will address the following topics:

    •
    Introduction to the PCT system;
    •
    Basics of the PCT;
    •
    Filing International applications by U.S. applicants;
    •
    The International Bureau as a Receiving Office — by choice or by circumstance;
    •
    Signature requirements, agents, common representatives and withdrawals;
    •
    Claiming priority and furnishing of priority documents;
    •
    International search and written opinion of the ISA;
    •
    Recent and upcoming changes;
    •
    International publication;
    •
    Filing a Demand for International Preliminary Examination;
    •
    International Preliminary Examination;
    •
    Correcting defects;
    •
    Amending the International application and filing informal comments;
    •
    Entry Into the National Phase;
    •
    U.S. National Phase entry requirements;
    •
    The PCT from a user's perspective; and
    •
    Where to get help.

    Franklin Pierce Law Center A detailed program
    for seminar can be obtained here.

    The registration
    fee for the
    seminar is $100 (students), $400 (Pierce Law
    alumni), or $450 (non-students)
    .  Those interested in registering for the
    seminar can do so here.

  • New York #3 World Research
    Group (WRG) will be holding its Second Annual Corporate IP Counsel Summit on
    April 27-28, 2010 in New York, NY. 
    The conference will focus on the latest developments in monetizing and
    maximizing IP, patent portfolio optimization.

    Among the
    presentations to be offered by WRG faculty are:

    • Keynote Session
    — Dennis Crouch, Patently-O;
    • Enhancing your
    value as in-house counsel by learning to operate in the new world of open
    innovation (panel discussion);
    • Preparing for
    litigation:  Best practices to
    prepare, assert or defend against a patent assertion which leads to litigation;
    • Overcoming
    barriers to patenting "green" intellectual property;
    • Navigating the
    Patent Office for streamlined, less costly filings;
    • Maximizing patent
    life cycles:  Lessons learned from
    the pharma industry;
    • Adjusting IP
    strategies through the transition from start-up to steady-stay;
    • Adjusting to the
    new normal:  Thriving despite
    budgets and billing pressures;
    • Leveraging proactive
    patent infringement mitigation strategies;
    • Negotiating and
    drafting license agreements for patents and trademarks (panel discussion);
    • Effectively
    quantifying and assessing ROI for IP programs;
    • Examining the
    relationship between standard setting and patent licensing;
    • Latest
    developments in remedies for patent infringement;
    • Best practices
    for protecting business method patents threatened by Bilski; and
    • Assessing Federal
    Circuit case law related to patentable subject matter and beyond (panel discussion).

    The agenda for
    WRG's Corporate IP Counsel Summit including descriptions of each sessions and
    list of speakers, can be found here (Day One;
    Day Two).  A complete brochure for this conference
    can be downloaded here.

    World Research Group The registration
    fee for the conference ranges from $1,895 (corporate rate) to $2,195 (consultant
    and law firm rate).  Those
    interested in registering for the conference can do so here,
    by sending an e-mail to info@worldrg.com, by calling 1-800-647-7600 or
    1-781-939-2500, or by faxing 1-781-939-2543.

  • Manager's
    Amendment of S. 515 Would Eliminate Most Suits

        By Kevin E. Noonan —

    Over the past few weeks, close to perhaps one
    hundred actions, characterized as "qui
    tam
    " (or whistleblower) lawsuits have been filed against several large
    companies (including 3M, Monster Cable Products, S.C. Johnson &
    Co., Proctor & Gamble Co., and Novartis Pharmaceuticals, Inc.).  These actions are based on alleged
    violation of 35 U.S.C. § 292(b), the "false marking" portion of the
    patent statute that makes it a violation to intentionally mark an item in
    commerce with a patent number that has expired or does not protect the goods:

    (a)  Whoever, without the consent of the patentee, marks upon, or affixes
    to, or uses in advertising in connection with anything made, used, offered for
    sale, or sold by such person within the United States, or imported by the
    person into the United States, the name or any imitation of the name of the
    patentee, the patent number, or the words "patent," "patentee,"
    or the like, with the intent of counterfeiting or imitating the mark of the
    patentee, or of deceiving the public and inducing them to believe that the
    thing was made, offered for sale, sold, or imported into the United States by
    or with the consent of the patentee; or Whoever marks upon, or affixes to, or
    uses in advertising in connection with any unpatented article the word "patent"
    or any word or number importing the same is patented, for the purpose of
    deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising
    in connection with any article the words "patent applied for," "patent
    pending," or any word importing that an application for patent has been
    made, when no application for patent has been made, or if made, is not pending,
    for the purpose of deceiving the public – Shall be fined not more than $500 for
    every such offense.

    (b)  Any person may sue for the penalty, in which
    event one-half shall go to the person suing and the other to the use of the
    United States.

    Federal Circuit Seal These suits have arisen at this time in part
    because of the Forest Group, Inc. v. Bon Tool Co. case, where the Federal Circuit determined that calculation of the statutory penalty
    for false marking (up to $500 per "offense") would be left to the sound discretion
    of the trial court; this overturned the District Court's calculus that each "offense"
    was the decision to false mark, and created the possibility of a windfall for plaintiffs.  For mass-produced and –sold consumer
    items, a fine of $500 for sale of each improperly-marked item would be catastrophic.  The Federal Circuit is set to hear oral
    arguments on April 6 on a similar case, Pequignot
    v. Solo Cup
    , that will address the question of intent to false mark that
    raises liability under the statute.

    While there has been much to criticize in the
    attempts in this and prior Congresses to pass patent "reform"
    legislation, one provision of the Senate bill, S. 515, contained in the
    recently-released Manager's Amendment seems to provide a quick remedy for this
    rash of qui tam lawsuits.  The
    specific language is contained in Section 2, subsection (k):

    (k) FALSE MARKING.—

    (1)
    IN GENERAL.—Subsection (b) of section 292 of title 35, United States Code, is
    amended to read as follows: ''(b) A person who has suffered a competitive
    injury as a result of a violation of this section may file a civil action in a
    district court of the United States for recovery of damages adequate to
    compensate for the injury.''

    (2)
    EFFECTIVE DATE.—The amendment made by this subsection shall apply to all cases,
    without exception, pending on or after the date of the enactment of this Act.

    Perhaps the most important feature of the proposed
    legislation is its retroactivity:  section (k)(2) would, if passed, support a motion to dismiss for almost
    all of the defendants in all of the qui
    tam
    lawsuits now pending.  On
    the other hand, the proposed legislation converts a public right to a private
    one, and raises the possibility that a false-marking patentee could be subject
    to multiple lawsuits by several of its competitors.  And the proposed change eliminates the government's right to
    half of the fine imposed for false marking.

    Senate Seal Passage of this or any other portion of S. 515, is
    uncertain at best, particularly in view of the broadside from the House
    directed at Senator Leahy and his Senate brethren who have agreed on the latest
    "compromise" (see "House Leadership Says It Lacked 'Adequate Input' on Senate Patent Reform Bill"
    ).  However, it is good to see representative government working at its
    best:  a problem arose for important constituents, and their representatives
    promptly responded.  Would that
    this performance was the norm, and more generally the case for all Congress's
    constituents.  But for the
    companies under the threat of qui tam
    litigation, this amendment could not have come at a better time.

    Hat tip to Alan Krantz of McDonnell, Boehnen,
    Hulbert & Berghoff LLP for contributing to this post.

  •     By Suresh Pillai —

    MIT Dismissed as Party in RNAi Dispute

    MIT Seal The U.S. District Court for the District
    of Massachusetts has granted the joint motion filed by plaintiff the Max Planck
    Institute
    and defendant the Massachusetts Institute of Technology to dismiss MIT as a party in a patent suit brought by Max Planck.  The
    focus of the lawsuit is various licensing agreements covering RNA
    interference technologies.  The
    central dispute in the lawsuit concerns whether defendants the Whitehead
    Institute for Biomedical Research
    ,
    MIT, and the University of Massachusetts
    improperly claimed aspects of inventions first created by Max Planck
    researchers (see "Court Report," July 5, 2009, and "Biotech/Pharma
    Docket
    ," February 17, 2010).

    The most recent filing in the case provides for the dismissal
    of MIT as a defendant in the case.  In exchange, MIT has agreed to be bound by any judgment entered against
    the other defendants.  Read MIT's motion
    here.


    Novartis Prevails over Pfizer in ReFacto® Suit

    Novartis The U.S. District Court for the District
    of Delaware has ruled that there is no interference-in-fact between the patent claims of two Novartis patents covering
    truncated Factor VIII variants, biomolecules useful in the treatment of
    hemophilia, and the claims of a patent owned by Genetics
    Institute LLC, a Pfizer Inc. unit.  The Genetics Institute
    originally filed suit in May 2008 alleging that the claims of two Novartis
    patents, U.S. Patent Nos. 6,060,447 and
    6,228,620,
    were anticipated by a Genetics Institute patent, U.S. Patent No. 4,868,112.  The District Court, however, ruled that the
    claims of the '447 and '620 patents were not anticipated by the '112
    patent.  Although the Court
    reasoned that all three patents were directed to the same subject matter, the Court concluded that there was a lack of homology regarding the amino acid
    deletion ranges cited between the '112 and '620 patents.  This lack of overlap also prevented the
    claims of the '447 patent from being obvious in light of the '112 patent.

    Read the District Court's opinion here.


    Cordis Awarded Fees and Costs in Surgical Device
    Suit

    Cordis The U.S. District Court for the Southern District
    of Illinois granted defendant Cordis Corp.,
    a subsidiary of Johnson and Johnson, its motion to have the case declared exceptional
    for the purpose of receiving compensation for attorneys' fees and
    expenses.  Plaintiff MarcTec LLC
    originally filed suit in 2007, alleging that Cordis' Cypher blood vessel stent
    infringed U.S. Patent Nos. 7,128,753 and 7,217,290,
    both of which are owned by MarcTec.  Cordis counterclaimed that the patents-in-suit were invalid.  In an earlier ruling, the District Court granted
    summary judgment of noninfringement in favor of Cordis and dismissed the
    counterclaims without prejudice.

    In this most recent ruling, the Court concluded
    that MarcTec, in pursuing the suit after learning that Cordis' inventions did
    not infringe the main claim at issue, established its case by depending
    upon mischaracterization of the Court's claim construction and the use of
    unreliable expert testimony.  Read the District Court's opinion
    here.

  •      By Bradley Crawford —

    EPO On February 19, 2010, the European Patent Office Enlarged Board of
    Appeals issued its decision in In re Abbott
    Respiratory,
    G 0002/08 (EPO Enlarged
    Board of Appeal 2010).  
    In this decision, three questions
    were considered by the Enlarged Board, but only the third question will be considered here:

    (3)  Are any special considerations applicable when
    interpreting and applying Articles 53(c) and 54(5) EPC 2000?

    While the exact meaning of this question is not
    immediately evident to U.S. practitioners, the Board was being asked to
    consider the need for Swiss-style claims in light of EPC 2000 coming into force
    on December 13, 2007.

    Before discussing the Board's decision, it may be useful
    to review the two types of "use" claims that existed in Europe before
    the passage of EPC 2000 and up to the issuance of this opinion.  The first and broadest type of use claim is the
    first medical use claim, which may be written as:

    Compound X for use as a
    medicament.

    The second and more narrow type of use claim is the
    Swiss-style claim, which may be written as:

    The use of compound X for the manufacture
    of a medicament for treating of disease Y.

    After considering the changes made by EPC 2000, the
    Board answered the question as follows:

    Where the subject matter of a claim is
    rendered novel only by a new therapeutic use of a medicament, such claim may no
    longer have the format of a so called Swiss-type claim as instituted by
    decision G 5/83.

    Thus, the use of Swiss-style claims is to be
    forbidden in the future.  Elsewhere
    in the opinion, the Board states that applicants must stop using Swiss-style
    claims no later than three months after the opinion is officially published in
    the Journal of the EPO, which has not happened yet.

    The Board also noted that this new rule has "no
    retroactive effect."  Consequently,
    patents that issued with Swiss-style claims will not be impacted.

    If Swiss-style claims cannot be used, then what
    format can be used?  Rather than
    using Swiss-style claims in the future, applicants should use second medical
    use claims, which may be written as:

    Substance X for the treatment of
    disease.

  •     By
    Donald Zuhn —

    Senate Seal Last
    Thursday, Senate Judiciary Committee Chairman Patrick Leahy (D-VT) informed
    those watching the Committee's Executive Business Meeting that the Committee
    had reached a "tentative agreement in principle" regarding patent
    reform legislation (see "Chairman
    Leahy Announces "Tentative Agreement in Principle" on Patent Reform
    Bill
    ").  Chairman Leahy noted that the Committee
    would release details regarding the bill "in the coming days" and after
    consultation with House legislators. 
    He also mentioned that he had been meeting with members of the House
    majority and minority leadership to discuss the Senate bill in an effort to
    prevent the legislation from becoming a "partisan issue."

    On
    Friday, House Judiciary Committee Chairman John Conyers, Jr. (D-MI), Committee
    Ranking Minority Member Lamar Smith (R-TX), and Representative (and House Judiciary Committee
    member) Howard Berman (D-CA) responded to Chairman Leahy's announcement by
    issuing a short statement
    of their own.  The statements
    reads:

    We appreciate the Senate's most recent
    efforts to craft its compromise on patent reform legislation, but those efforts
    have thus far proceeded without adequate input from House members.  Now that we know the substance of the
    Senate's draft compromise, House members are in the process of reviewing the
    proposal in order to arrive at a bill a majority of both chambers can
    support.  We look forward to
    negotiations with the Senate in the hope of achieving such a bill.

    House of Representatives Seal Interestingly,
    the statement was released on the Republicans' separate House Committee on the
    Judiciary website
    ,
    despite being issued by two Democrats and one Republican.  Also of interest is Rep. Berman's
    decision to sign onto the statement, particularly in view of the fact that he
    sponsored H.R. 1908,
    the patent reform bill passed by the House in September 2007 (Chairman Conyers
    and Rep. Smith were two of the bill's 23 co-sponsors).  H.R. 1908 contained a number of
    controversial provisions, including a damages provision that would have limited
    available damages (where actual damages are not established) to a reasonable
    royalty depending on the "economic value properly attributable to the
    patent's specific contribution over the prior art," a provision that would
    have authorized the USPTO to require information from applicants including
    search reports and other information relating to patentability searches; and a
    provision that would have given the USPTO substantive rulemaking authority (see 'Patent "Reform' Bill Passes
    House of Representatives
    ").

    In
    view of the response from Chairman Conyers, Rep. Smith, and Rep. Berman, it may take more than the few days Chairman Leahy believed he would need to secure the support of
    House leadership for his new patent reform bill.

  • Are the
    Courts or the FTC Misapplying the
    Law?

        By Kevin E. Noonan —

    Federal Trade Commission (FTC) Seal In
    its report on so-called "pay for delay"
    settlements of ANDA litigation (otherwise known as "reverse payments"),
    the Federal Trade Commission (FTC) is calling for an outright ban on
    such
    agreements.  Settlements containing
    "reverse payments" involved payments from the patent- and
    NDA-holding, branded drug company to a generic company that has filed an
    ANDA
    containing a Paragraph IV certification that an Orange Book-listed
    patent is
    invalid or unenforceable.

    According to the FTC, these settlements are per se violations of Section 1 of the Sherman Antitrust
    Act.  The Commission's position is
    supported by only one recent appellate court decision, in the 6th Circuit Court
    of Appeals decision in
    In
    re
    Cardizem CD Antitrust Litigation
    , 332 F.3d
    896 (6th Cir. 2003).
      Several other courts of appeals have disagreed, including the Federal
    Circuit,
    In
    re Ciprofloxacin Hydrochloride Antitrust Litigation
    , 544 F.3d 1323 (Fed. Cir. 2008); the
    11th Circuit,
    Schering-Plough
    Corp.
    v. Fed. Trade Comm'n
    , 402 F.3d 1056 (11th Cir. 2005), and the Second Circuit, In
    re Tamoxifen Citrate
    Antitrust Litigation
    ,
    466 F.3d 187 (2d Cir. 2006).  The
    FTC contends that these courts of appeal have
    "misapplied
    the antitrust laws" by upholding this type of agreement, which raises the
    question of whether it may be the FTC that is "misapplying" the law
    by demanding a per se rule holding
    reverse payments to be illegal.  Since the FTC's position is completely goal-oriented (because the result
    of these agreements is a delay in generic competition), we have reviewed the
    bases of these several courts of appeals decisions.

    Andrx In this post, we turn to the 6th Circuit's decision
    in the Cardizem case.  This case was brought by a variety of
    patient groups as plaintiffs against Hoechst Marion Roussel and Andrx over a
    reverse payment-containing settlement agreement in ANDA litigation over U.S.
    Patent No. 5,470,584 for HMR's Cardizem CD product.  The active ingredient in
    Cardizem is diltiazem hydrochloride, used for treating angina and hypertension
    and as a preventative for heart attack and stroke.  Andrx filed an ANDA for
    Cardizem CD and HMR sued triggering the 30-month stay of FDA approval of the
    generic drug.  Andrx filed antitrust
    counterclaims and stated its intention to launch upon approval, and after
    expiration of the 30-month stay, the FDA approved Andrx's generic Cardizem
    CD.  According to the Court, "[o]n
    June 9, 1999, the FDA approved Andrx's reformulated product.  That same day, HMR
    and Andrx entered into a stipulation settling the patent infringement case and
    terminating the Agreement.  . . .  On June 23, 1999, Andrx began to market its
    product under the trademark Cartia XT, and its 180-day period of marketing
    exclusivity began to run."

    The terms of the agreement were as follows:

    • Andrx agreed not to market a generic version of
    Cardizem CD until Andrx received a final determination in its favor in the
    patent infringement lawsuit, HMR or Andrx entered into a licensing agreement, or
    HMR entered into a licensing agreement with a third party (the trigger date
    being the earliest of these).

    • Andrx agreed to dismiss its counterclaims (for
    unfair competition and antitrust violations).

    • Andrx further agreed to pursue its ANDA and not to
    relinquish or transfer its 180-day exclusivity period or any other right.

    • HMR agreed to pay Andrx $40 million per year
    (paid $10 million every calendar quarter) beginning on the date when the FDA approved Andrx's ANDA,
    and $100 million per year (less the interim $40 million payments) once either
    there was a final judgment that the '584 patent was not infringed, or HMR
    dismissed the patent infringement lawsuit, or there was another resolution of
    the lawsuit between the parties that did not finally resolve issues of
    invalidity, unenforceability, or infringement, and HMR did not refile or pursue
    the lawsuit.

    • HMR also agreed not to seek preliminary
    injunctive relief during the ANDA suit.

    The FDA approved Andrx's generic Cardizem CD
    formulation on June 9, 1998 (one day after the end of the 30-month stay), and
    HMR began paying Andrx the $40 million/year payment in $10 million quarterly
    payments.  Andrx then filed a
    supplement to its ANDA specifying that it had reformulated the product and
    certified that its reformulated product did not infringe the claims of the '584
    patent.  The FDA approved this
    reformulated product on June 9, 1999, and the parties settled the infringement
    suit and terminated the agreement that day.  HMR also paid Andrx a final sum of $50.7 million, for a
    total of payments equaling $89.83 million.  Two weeks later, Andrx began to
    market its generic product, starting the 180-day exclusivity period.  This date of market entry was almost 12
    years before the expiration date of the '584 patent (February
    15, 2011
    ).

    The agreement contained a number of provisions not
    found in other, legal agreements.  First, Andrx was the first ANDA filer, and the agreement did not require
    the generic company to change its Paragraph IV certification.  Since the parties settled the ANDA
    litigation, the 180-day exclusivity period could not begin to run until Andrx
    entered the marketplace — a date delayed by the agreement.  Moreover, the agreement contained a
    provision where Andrx agreed neither to relinquish nor transfer its right to
    the exclusivity period.  In
    addition, plaintiffs alleged that the agreement covered generic Cardizem
    products that did not satisfy the dissolution limitations in the patent claims
    and thus did not infringe the '584 patent (specifically, that Andrx's
    reformulated product released not less than 55% of the drug within the first 18
    hours after administration, which falls outside the scope of the limitation of
    the '584 patent claims that required not more than 45% release of the drug 18
    hours after administration).

    The lawsuit against HMR and Andrx was consolidated
    from a number of complaints from individuals, states, and other groups.  These complaints were brought
    under § 1 of the Sherman Act and § 4 of the Clayton Act (including its
    treble damages provisions), based on the "but for" argument that a
    generic Cardizem would have been on the market but for the agreement, and that
    the exercise of its 180-day exclusivity barred other generics from coming to
    market.  Plaintiffs fell into
    three groups: (1) the "State Law Plaintiffs," indirect purchasers,
    and class representatives, from various states (California, Michigan,
    Minnesota, New York, North Carolina, Tennessee, and Wisconsin and the District
    of Columbia) whose complaints, initially filed in state court and then removed
    to federal district court by defendants, allege violations of state antitrust
    and consumer protection statutes; (2) the "Sherman Act Class Plaintiffs,"
    direct purchasers, and class representatives, whose complaint, filed in federal
    district court, alleges a violation of federal antitrust law; and (3) the "Individual
    Sherman Act Plaintiffs," two groups of purchasers, not representatives of
    any class, whose complaints, filed in federal district court, allege violations
    of federal antitrust law (filed by The Kroger Co., Albertson's, Inc., The Stop
    and Shop Supermarket Co., and Eckerd Corp.); JA 887-896 (filed by CVS Meridian,
    Inc. and Rite Aid Corp.), the plaintiffs from seven states (California,
    Michigan, Minnesota, New York, North Carolina, Tennessee, and Wisconsin) and
    the District of Columbia claim violations of state antitrust law.

    The District Court held that the agreement was per se illegal, because the reverse
    payment provisions and actual payments from HMR to Andrx delayed generic entry
    and constituted a naked, horizontal restraint of trade.  The Court certified the following
    question for interlocutory appeal to the 6th Circuit:

    In determining whether Plaintiffs' motions for partial
    judgment were properly granted, whether the Defendants' September 24, 1997
    Agreement constitutes a restraint of trade that is illegal per se under
    section 1 of the Sherman Antitrust Act, 15 U.S.C. § 1, and under the
    corresponding state antitrust laws at issue in this litigation.

    In its opinion, the appellate court noted that
    while the literal meaning of Section 1 of the Sherman Act would render per se
    illegal every agreement in restraint of trade, the Supreme Court has "long
    recognized" that the statute is meant only to prohibit unreasonable
    restraints, and that courts assess whether a restraint is unreasonable using a
    rule of reason, citing State Oil Co. v.
    Khan
    ,
    522 U.S. 3, 10 (1997).  "Under this approach, the 'finder of fact
    must decide whether the questioned practice imposes an unreasonable restraint
    on competition, taking into account a variety of factors, including specific
    information about the relevant business, its condition before and after the
    restraint was imposed, and the restraint's history, nature, and effect.'"  State Oil (citing Arizona v. Maricopa Cty. Medical Soc., 457 U.S. 332, 343 & n.
    13 (1982)).

    However, there are some agreements, according to
    the Court, that "have such predictable and pernicious anti-competitive
    effect[s], and such limited potential for procompetitive benefit," that
    they are "deemed unlawful per se."  Northern Pacific Ry. Co. v. United
    States
    ,
    356 U.S. 1, 5 (1958).  Courts have recognized that certain kinds of agreements cannot satisfy
    the rule of reason under any circumstances, and such agreements have a "conclusive
    presumption" of illegality, citing Arizona
    v. Maricopa Cty. Medical Soc.
    at 344.  For such agreements, "no consideration is given to the intent
    behind the restraint, to any claimed pro-competitive justifications, or to the
    restraints actual effect on competition," the Court opined, citing National College Athletic Ass'n
    v. Board of Regents of the UNiv. of Okalhoma
    ,
    468 U.S. 85, 100 (1984).  The Supreme Court is cited as being almost dismissive of
    such instances:  "a per se rule reflects the judgment that
    such cases are not sufficiently common or important to justify the time and
    expense necessary to identify them."  Continental
    T.V., Inc. v. GTE Sylvania Inc.
    ,
    433 U.S. 36, 50 n. 6 (1977).

    Citing the NCAA
    case, the 6th Circuit identifies naked, horizontal price restraints as being per se illegal according to this line of
    Supreme Court precedent.  This type
    of agreement is defined as "an agreement between competitors at the same
    level of the market structured to allocate territories in order to minimize
    competition," citing United States
    v. Topco Assocs.
    ,
    405 U.S. 596, 608 (1972), stating that "[t]his Court
    has reiterated time and time again that horizontal territorial limitations . . . are naked restraints of trade with no purpose except stifling of competition.  Such limitations are per se
    violations of the Sherman Act."

    With this analytical framework in mind, the 6th Circuit
    listed facts it termed "undisputed and dispositive."  First, under the agreement, HMR was
    assured that Andrx, at the time the only potential competitor in the
    marketplace for Cardizem, would remain off the market at a cost of $10 million
    per quarter even after Andrx had obtained FDA approval for its generic version
    of the drug.  Second, as a
    consequence of this agreement, not only Andrx but all other generic competitors
    were kept off the market in view of Andrx's 180-day exclusivity period and the
    provisions of the agreement that Andrx would not relinquish or transfer the
    right (which commenced only when Andrx first entered the marketplace; thus
    there was a direct nexus between the agreement's provisions keeping Andrx off
    the market and the delay in generic Cardizem coming to the marketplace from any
    source).

    This was enough for the Court to characterize this
    as a naked horizontal restraint that is per
    se
    illegal.  In a footnote, the Court addressed the consequences of a per se determination, instead of applying
    a rule of reason analysis:

    The risk that the application of a per se rule will lead to the condemnation
    of an agreement that a rule of reason analysis would permit has been recognized
    and tolerated as a necessary cost of this approach.  See, e.g., Maricopa Cty., 457 U.S. at 344 ("As in every rule
    of general application, the match between the presumed and the actual is
    imperfect.  For the sake of business certainty and litigation efficiency, we
    have tolerated the invalidation of some agreements that a full-blown inquiry
    might have proved to be reasonable."); United
    States v. Topco Associates, Inc.,
    405 U.S. 596, 609 (1972) ("Whether
    or not we would decide this case the same way under the rule of reason used by
    the District Court is irrelevant to the issue before us.").

    The 6th Circuit was not persuaded by the arguments to the
    contrary.  Specifically, the Court
    rejected defendants' argument that the agreement was a proper exercise of the
    patent right.  "[T]he
    Agreement cannot be fairly characterized as merely an attempt to enforce patent
    rights or an interim settlement of the patent litigation," according to
    the Court.  "As the plaintiffs
    point out, it is one thing to take advantage of a monopoly that naturally
    arises from a patent, but another thing altogether to bolster the patent's
    effectiveness in inhibiting competitors by paying the only potential competitor
    $40 million per year to stay out of the market."  And arguments that there were pro-competitive effects that
    offset the anticompetitive effects were unavailing because of the Court's
    determination that the agreement was per
    se
    illegal.

    The Court also determined that the plaintiffs had
    pleaded sufficiently to satisfy the requirement of asserting an antitrust injury
    ((1) "injury of the type the antitrust laws were intended to prevent"
    and (2) injury "that flows from that which makes defendants' acts
    unlawful," citing Brunswick Corp. v.
    Pueblo Bowl-O-Mat, Inc.
    ,
    429 U.S. 477, 489 (1977)).  Part of the Court's decision was
    based on the standard of review, where all allegations in the complaint are
    taken as true and all inferences are drawn in plaintiffs' favor.  These included:

    (1) Andrx had
    developed and was ready to market a generic version of Cardizem CD; (2) Andrx
    had certified to the FDA that its generic product did not infringe any of the
    patents associated with Cardizem CD; (3) the patent infringement litigation was
    a 'sham'; (4) prior to entering into the Agreement, Andrx had
    represented to the federal district court presiding over the patent
    infringement litigation that it intended to market and sell its generic version
    of Cardizem CD as soon as it received final FDA approval; (5) the Agreement
    entered into by Andrx and HMR provided, among other things, that once the FDA
    approved Andrx's ANDA, HMR would commence making quarterly payments of $10
    million in exchange for Andrx not bringing its generic product to market; (6)
    Andrx did not enter the market upon receiving FDA approval on July 9, 1998; (7)
    pursuant to the Agreement, HMR ultimately paid Andrx $89.83 million; (8) 'but
    for' the Agreement and the payment, Andrx would have begun to market its
    generic version of Cardizem CD on or shortly after July 9, 1998; (9) the
    Agreement effectively eliminated generic competition in the market for Cardizem
    CD from July 1998 through July 1999, when the Agreement was terminated; and
    (10) due to the lack of a competitive market, the plaintiffs were deprived of
    the option of purchasing a generic lower-priced drug and paid more than they
    otherwise would have for Cardizem CD.

    The 6th Circuit affirmed the District Court's
    determination that these allegations satisfy the Brunswick requirements and that plaintiffs had alleged sufficient
    antitrust injury that the District Court properly denied defendants' motion to
    dismiss.  The antitrust injury was
    to consumers who "were deprived of a less expensive generic product,
    forcing them to purchase the higher-priced brand name product, because of a per se illegal horizontal market
    restraint"; preventing such an outcome was "undoubtedly a raison d'etre" for passage of the
    Sherman Act.  In addition, the
    injury "'flows' from that which makes defendants' act unlawful,'" i.e., causing consumers to pay more for
    branded Cardizem CD than they would have paid for Andrx's generic version.  And the Court found "incredible"
    the argument that Andrx would not have entered the market for fear of patent
    infringement liability in the absence of the $89 million paid by HMR under the
    agreement.

    There are several distinctions that can be used to
    explain the different outcomes in this case and the other cases that did not
    find a reverse payment agreement to be per
    se
    illegal.  For example, in
    the three cases that did not find an antitrust violation in a reverse payment
    agreement, the courts were careful to state that there were circumstances in
    which the agreement could be illegal.  These included an extension of the exclusionary right of the patent in
    excess of the proper scope of the claims, initiation or continuance of "sham"
    litigation where the patentee knew that the patent was invalid or unenforceable
    or that the accused product did not infringe the asserted claims, or Walker Process-type violations.  Here, the Court found that Andrx's
    reformulated product did not infringe the claims of the '584 patent.  From that conclusion, payment from HMR
    to Andrx was not a legitimate exercise of the patent's exclusionary right.  Moreover, in other instances, the first
    ANDA filer changed its certification from Paragraph IV to Paragraph III, and
    thus gave up its 180-day exclusivity period; that was not the case here.  Not only did Andrx not change its
    certification, but the reverse payment agreement contained an affirmative
    requirement that Andrx neither relinquish nor transfer the right.  The effect of this provision was in
    fact to keep other potential generic entrants from the marketplace.  Finally, while in other cases the
    change in certification permitted other generic drug companies to file their
    own ANDAs and to thus be able to obtain FDA approval (and in some of those
    cases that is precisely what occurred, although the patentee prevailed and
    other generic companies did not enter the market), here the reverse payment
    agreement had a preclusive effect on other potential generic entrants.

    It is
    likely (although not expressly stated in the opinion) that the fact that Andrx's
    reformulated product did not infringe the '584 patent (and the agreement was at
    least in part responsible for delaying entry of the reformulated product) was
    an important factor precluding the 6th Circuit from crediting other considerations
    that were important in the decisions of the other appellate courts that the
    reverse payments in those cases were not illegal.  As in those cases of legal reverse payment agreements, Andrx's
    generic Cardizem CD product entered the marketplace significantly earlier than
    the expiration date of the '584 patent.  And the Court noted that Andrx's generic reformulated product, sold as
    Cartia XT, had "captured a substantial portion of the market"
    and "sold for a much lower price than Cardizem CD."  From a "big picture"
    approach, as has been applied by other circuit courts of appeal for other
    reverse payment agreements, the period of delay from the time the parties
    entered into the agreement (September 24, 1997) until Andrx first entered the
    marketplace with its Cartia XT product (July 9, 1999) (i.e., less than 22 months) is significantly shorter than the
    difference between the time Cartia XT was first marketed and the expiration
    date of the '584 patent (February 15, 2011) (i.e., 11 years, 7 months).  This "advantage" to the public evaporates under circumstances
    where the patentee had no right to exclude the generic entrant from the
    marketplace (because the generic drug product does not infringe the patent
    claims); that appears to have been the case here, and no doubt influenced the Court's decision.

    Even in a case, as here, where the
    court holds a reverse payment to be per
    se
    illegal, the opinion shows the benefit of assessing these agreements as
    they arise rather than to create a per se
    rule that all reverse
    payment-containing agreements are per se
    illegal.  As the courts of appeal
    in
    In re Ciprofloxacin Hydrochloride Antitrust Litigation, Schering-Plough
    Corp. v. Fed. Trade Comm'n
    , and In re
    Tamoxifen Citrate Antitrust Litigation
    noted, there are many circumstances
    under which reverse payment-containing agreements are pro-competitive,
    consistent with the proper exercise of the exclusionary patent right and
    conserving judicial and societal resources.  The FTC's approach (as well as bills introduced in Congress
    banning reverse-payment agreements, and the purported provisions of the
    renewed healthcare reform proposal espoused by President Obama removes
    these advantages when they exist, and substitute by legislation what courts (like
    the 6th Circuit) can deliver in those instances when reverse payment-containing
    agreements cross the line into illegal restraints of trade.  While there are certainly political
    advantages in opposing these agreements in all instances, the experience of
    several courts of appeals strongly suggest that making the determination per se may restrict rather than advance
    expeditious generic drug entry.  Which isn't what the FTC, the administration, the generic drug companies, or the public want.