Federal Circuit upholds Humira invalidity finding

The US Court of Appeals for the Federal Circuit has upheld a district court’s decision to invalidate a patent covering arthritis treatment Humira (adalimumab), after a challenge by biopharmaceutical company AbbVie.

The case centred on US patent number 8,383,120, which is owned by the UK-based the Kennedy Trust for Rheumatology Research and claims a method for treating rheumatoid arthritis.

In 2013, AbbVie, which sells Humira after having signed a licensing deal with the Kennedy Trust, filed a motion for a summary judgment at the US District Court for the Southern District of New York. It asked for the ‘120 patent to be declared invalid on the grounds of collateral estoppel.

Collateral estoppel stops issues that were fully and fairly litigated in an earlier proceeding from being re-tried.

In a previous case that was also filed by AbbVie, the New York court had decided that a similar Kennedy Trust-owned patent covering Humira (US number 7,846,442) was invalid for obviousness-type double patenting over an earlier issued patent (6,270,766).

AbbVie had paid more than $100 million in royalties to license the ‘766 patent in order to make and sell Humira.

After the ‘766 patent expired in 2012, Kennedy demanded that AbbVie continue making royalty payments on the basis of the similar ‘442 patent, which was eventually invalidated in 2013.

After the trial in that case, but before the court had made its decision, the Kennedy Trust was granted the ‘120 patent.

The most recent case asked whether the ‘120 patent should be declared invalid.

Last July, District Judge Paul Crotty found that it was, deciding that the issues here were “substantially identical” to those fought in the previous invalidity action. The Kennedy Trust appealed against the ruling.

The court granted AbbVie’s motion for summary judgment and declared the ‘120 patent invalid.

Circuit Judges Evan Wallach, Richard Taranto and Edward Chen yesterday affirmed that judgment.