Merck Wins Trial on Validity of Patent Claims in Hatch‑Waxman Case

On September 29, 2017, the United States District Court for the District of New Jersey upheld the validity of a patent asserted by Cravath client Merck Sharp & Dohme Corp. against Actavis Laboratories FL, Inc. and other subsidiaries of Teva Pharmaceuticals (“Actavis”). The patent covers Noxafil® (“posaconazole”), an antifungal drug prescribed for the prevention and treatment of systemic, potentially fatal, fungal infections. Actavis is seeking to market a generic version of the tablet formulation. After a bench trial in July 2017, U.S. District Judge Peter G. Sheridan ruled that a patent application that Actavis contended rendered the asserted patent claims invalid, did not in fact invalidate those claims because posaconazole had been invented before that application became public. The patent-in-suit will not expire until July 2019.

The Cravath team included partners Evan R. Chesler and David Greenwald, senior attorneys Samira Shah and James E. Canning, practice area attorney Tatiana N. Alyonycheva, and associate Brittany L. Sukiennik. The case is Merck Sharpe & Dohme Corp. v. Actavis Laboratories FL, Inc., et al., No. 3:15-cv-6075 (D.N.J.).