Unigene Laboratories, Inc. and Upsher-Smith Laboratories, Inc v. Apotex, Inc.

Unigene Laboratories, Inc. and Upsher-Smith Laboratories, Inc v. Apotex, Inc.

Fed. Cir. (2011)

Fitzpatrick Obtains Federal Circuit Affirmance of Patent Validity for Unigene Laboratories, Inc. and Upsher-Smith Laboratories, Inc.

On August 25, 2011, the United States Court of Appeals for the Federal Circuit affirmed the validity of a patent owned by Unigene Laboratories, Inc. (“Unigene”) directed to a postmenopausal osteoporosis drug. The Federal Circuit affirmed the New York District Court’s Summary Judgment of non-obviousness granted on August 31, 2009 by District Court Judge Patterson.

The Federal Circuit agreed that the District Court correctly decided that Unigene’s claim 19 of US Re 40,812 was not invalid. The Federal Circuit also affirmed the District Court’s denial of Apotex’s motion to breach of the attorney-client privilege under the crime fraud exception, and the District Court’s holding that Apotex had waived several counterclaims.

The Federal Circuit decision 2010-1006 was written by Chief Judge Rader, and joined by Circuit Judges Moore and O’Malley. The New York District Court decisions that were affirmed can be found at:

  • Unigene Labs., Inc. v. Apotex, Inc. (“Summary Judgment Opinion”), No. 06-cv-5571, Dkt. No. 175 slip op. at 28-29 (SDNY Aug. 31, 2009);

  • Unigene Labs., Inc. v. Apotex, Inc. (“Crime Fraud Opinion”), No. 06-cv-5571, Dkt. No. 89 slip op. at 18 (SDNY Feb. 4, 2008); and

  • Unigene Labs., Inc. v. Apotex, Inc. (“Counterclaim Opinion”), No. 06-cv-5571, 2010 WL 2730471 (SDNY July 7, 2010).

Unigene and Upsher-Smith Laboratories, Inc. were represented by Fitzpatrick attorneys Bruce C. Haas, Steven C. Kline, Dennis Gregory and Patrick Chen.