Supreme Court Passes on Eli Lilly Patent Infringement Win

Eli Lilly & Co.‘s patent infringement victory against Hospira Inc. and Dr. Reddy’s Laboratories Ltd. will stand after the U.S. Supreme Court declined review.

The U.S. Court of Appeals for the Federal Circuit held in August 2019 that Hospira’s and DRL’s New Drug Applications infringed Lilly’s patent on its cancer drug Alimta under the doctrine of equivalents. The doctrine imposes liability for equivalents to patented technology that don’t literally infringe a patent’s claims.

Hospira and DLR argued that Lilly’s doctrine-of-equivalents claims were barred by prosecution history estoppel because Lilly based its infringement allegations on patent claims that it lost when it narrowed the scope of the patent during prosecution at the patent office.

The Federal Circuit misapplied the U.S. Supreme Court’s ruling in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Hospira and DRL argued in separate petitions for Supreme Court review. In Festo the Supreme Court said prosecution history estoppel overcomes the doctrine of equivalents except in certain circumstances.

Lilly owns U.S. Patent No. 7,772,209 covering Alimta, which uses a salt form of the chemical compound pemetrexed disodium to treat lung cancer and mesothelioma. Hospira and DRL’s new drug applications relied on Lilly’s clinical data but sought to market pemetrexed ditromethamine instead of disodium.

The court is scheduled to consider another petition raising a doctrine-of-equivalents question at its June 18 conference. In that case, the Federal Circuit affirmed an International Trade Commission ruling that CJ CheilJedang’s dietary supplements for animal feed infringe Ajinomoto Co.'s U.S. Patent No. 7,666,655 on making bacteria produce more amino acid.

Jenner & Block LLP represents Hospira. Kirkland & Ellis LLP represents Dr. Reddy’s. Latham & Watkins LLP represents Eli Lilly.

The cases are Hospira, Inc. v. Eli Lilly & Co., Fed. Cir., No. 19-1058, review denied 6/15/20; and Dr. Reddy’s Labs., Ltd. v. Eli Lilly & Co., Fed. Cir., No. 19-1061, review denied 6/15/20.