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29 June 2021AmericasMuireann Bolger

Flatwing fails to shift attorney fees to Pfizer unit, Anacor

Generic drug maker Flatwing Pharmaceuticals has lost its bid to offset nearly $690,000 in fees and expenses to Pfizer unit Anacor Pharmaceuticals after a US federal judge ruled that the “circumstances were not exceptional” enough to warrant the shift.

District Judge Jennifer Hall handed down the decision on June 23 at the District Court for the District of Delaware.

The US generic had argued that Anacor should pay its attorney fees after it lost its suit trying to prevent Flatwing from making a copycat version of the blockbuster treatment Kerydin (tavaborole).

The treatment is a topical solution for the treatment of toenail fungus, which had been previously covered by US patent numbers 9,549,938, 9,566,289, 9,566,290, and 9,572,823.

In November 2017, FlatWing petitioned for inter partes review of these patents and Patent Trial and Appeal Board (PTAB) instituted a review of all claims of all four patents in June 2018.

In September 2018, FlatWing filed an Abbreviated New Drug Application at the US Food and Drug Administration seeking to market a generic version of Kerydin and Anacor countered by filing an infringement suit.

Patents were ‘obvious’

In June 2019, the PTAB issued its final written decisions, which concluded that the claims of each of the four patents-in-suit were obvious.

Although Anacor had maintained that claims containing a 5% tavaborole limitation were valid, the PTAB found that FlatWing had established by “a preponderance of the evidence” that they were obvious. In 2020, the US Court of Appeals for the Federal Circuit affirmed the PTAB’s decision.

After securing its victory, FlatWing filed an action requesting that Anacor pay it $687,295, which included $584,276 in fees incurred by FlatWing.

It claimed that sanctions against Anacor may include “attorney fees” for “[a]dvancing a misleading or frivolous argument or request for relief” or “[a]ny other improper misuse of the proceeding, including actions that harass or cause unnecessary delay..”

FlatWing’s had argued that the case was “exceptional” because Anacor’s case lacked substantive strength. According to FlatWing, when Anacor filed this action, it “knew” that all claims of the patents-in-suit were “almost certainly invalid” because the PTAB and Federal Circuit had already determined that the claims of an ancestor patent were invalid.

The winner doesn’t take it all

Judge  Hall ruled that while the PTAB ultimately ruled against Anacor, nothing in its lengthy written decisions suggested that it found Anacor’s arguments to be baseless, frivolous, unreasonable, or deficient in any way that was out of the ordinary.

In her summing up, Judge Hall pointed out that in determining whether this case is exceptional, the court must consider the totality of the circumstances and make a discretionary decision.

She said: “I cannot conclude that this case is exceptional. I find that it is not exceptional and, thus, attorney fees are not warranted.”

“In particular, I cannot conclude based on the record before me that the substantive positions taken by Anacor were out of the ordinary or that the manner in which it litigated this case was unreasonable.”

She added that having reviewed Anacor’s unsuccessful non-obviousness argument, she did not agree that it was objectively unreasonable or that it was so weak as to render it out of the ordinary. “The record before me does not suggest that Anacor’s non-obviousness arguments before the PTAB or the Federal Circuit were particularly weak,” she said.

Judge Hall concluded that “losing is not an unusual occurrence—someone loses in every case—and it certainly does not by itself entitle the winner to fees”, and she proceeded to deny Flatwing’s motion for attorney fees.

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More on this story

Americas
1 September 2020   Anacor Pharmaceuticals has unsuccessfully challenged the invalidation of four patents covering Kerydin, an antifungal treatment for nails.
Americas
18 May 2016   Pfizer has announced that it will be buying Anacor Pharmaceuticals for $5.2 billion, which will lead to it adding an experimental treatment for eczema, called Crisaborole, to its portfolio.

More on this story

Americas
1 September 2020   Anacor Pharmaceuticals has unsuccessfully challenged the invalidation of four patents covering Kerydin, an antifungal treatment for nails.
Americas
18 May 2016   Pfizer has announced that it will be buying Anacor Pharmaceuticals for $5.2 billion, which will lead to it adding an experimental treatment for eczema, called Crisaborole, to its portfolio.

More on this story

Americas
1 September 2020   Anacor Pharmaceuticals has unsuccessfully challenged the invalidation of four patents covering Kerydin, an antifungal treatment for nails.
Americas
18 May 2016   Pfizer has announced that it will be buying Anacor Pharmaceuticals for $5.2 billion, which will lead to it adding an experimental treatment for eczema, called Crisaborole, to its portfolio.