A recent decision by the U.S. District Court for the Southern District of Florida in Apotex, Inc. v. UCB, Inc. provides a cautionary tale about aggressive offensive tactics sometimes employed by generic drug companies in the context of high-stakes pharmaceutical patent litigation. The Florida federal district court judge captured the essence of the tale as follows: “This case involves an orchestrated scheme to deceptively obtain a patent with respect to a competitor’s product. It is illustrative of inventive litigation, as opposed to the scientific discovery that the patent laws were designed to promote.”
The lawsuit arose from a patent filed by generic drug company Apotex to cover a drug developed and sold by branded drug company UCB. The patent was filed several years after UCB’s drug already existed in the market. During a bench trial, the court found that Apotex’s founder and chairman, Dr. Bernard Sherman, was not just the alleged inventor named on the patent, but also had directed both the prosecution and litigation of the asserted patent. Noting his predominant role in this case, the court found that the asserted patent issued only because of his deceptive conduct. While the court discussed each of Dr. Sherman’s alleged deceptive acts in detail, the court’s overall finding was that Dr. Sherman did not invent any new process; instead, the court found that he took publicly available information about UCB’s drug, combined this information with teachings in the prior art, and secretly conducted his own testing of UCB’s drug from which he inferred UCB’s process for making its drug. The court found that Dr. Sherman then pursued a patent for this process while, as the court explained, purposely misleading the Patent Office Examiner into believing that his process was different from the prior art, including that used to make UCB’s existing drug.