Duke and Allergan escape antitrust claims in Akorn suit
A US judge dismissed antitrust counterclaims brought against Allergan and Duke University earlier this week, in a lawsuit the pair filed against generics maker Akorn.
The suit, filed in September last year at the US District Court for the District of New Jersey, claimed that Akorn’s generic version of hypotrichosis treatment Latisse (bimatoprost ophthalmic solution) infringes US patent 9,579,270.
North Carolina-based Duke University owns the patent, while Allergan is licensed to sell Latisse, a Food and Drug Administration-approved treatment for inadequate or insufficient eyelashes.
In November last year, Akorn responded with a set of counterclaims, arguing that Allergan and Duke University’s “sham litigation” is motivated by a desire to injure competition by pushing Akorn and other potential competitors out of the relevant market.
“By pursuing the present sham litigation, plaintiffs/counterclaim-defendants have caused antitrust injury to Akorn including raising the cost of doing business directly or indirectly, and forestalling, frustrating and preventing Akorn’s ability to compete in the relevant market,” said the counterclaims.
Akorn also requested a declaration of unenforceability due to patent misuse, arguing that university and Allergan’s goal in suing Akorn was “not to win a favourable judgment, but to harass Akorn and deter others from competition by engaging the litigation process itself, regardless of the outcome”.
In response, Allergan and Duke University sought to dismiss the antitrust and patent misuse counterclaims and, on Monday, September 16, US District Judge Brian Martinotti dismissed the counterclaims without prejudice.
This is the fourth suit brought by Allergan against Akorn over Latisse (Duke University has joined three).
According to Martinotti, Akorn had failed to state a claim for monopolisation by virtue of sham litigation and so its antitrust counterclaims should be dismissed.
“Plaintiffs had a reasonable basis on which to file the lawsuits in Latisse I-III such that it is implausible that the lawsuits were filed merely as an ‘anticompetitive tool’ while not genuinely seeking a positive outcome,” concluded Martinotti.
The judge added that Akorn had failed to adequately plead patent misuse, as its claim is premised entirely on its sham litigation allegations which cannot form the basis of a patent misuse claim.
Martinotti said: “Moreover, although Akorn alleges plaintiffs ‘impermissibly broaden[ed] the scope of the ‘270 patent’ both ‘physically’ and ‘temporally’, thereby causing an ‘anticompetitive effect’, Akorn offers absolutely no factual allegations to support this claim.”
Akorn now has 30 days from the date of judgment to re-plead its antitrust and patent misuse counterclaims.
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