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Bayer Pharma AG v. Watson Laboratories, Inc.

Citations: 212 F. Supp. 3d 489; 2016 U.S. Dist. LEXIS 94989; 2016 WL 3946916Docket: Civil Action No. 12-1726-LPS

Court: District Court, D. Delaware; July 18, 2016; Federal District Court

Narrative Opinion Summary

In this patent infringement case, Bayer Pharma AG and its affiliates (collectively 'Bayer') alleged that Watson Laboratories, Inc. ('Watson') infringed U.S. Patent No. 8,071,577, which covers a multi-phasic oral contraceptive regimen involving estradiol valerate and dienogest, ingredients in Bayer’s Natazia® product. Following a bench trial, the court concluded that Watson’s proposed products infringed the asserted claims of the '577 patent. Watson contended the claims were invalid due to obviousness and obviousness-type double patenting. However, the court found Watson failed to present clear and convincing evidence to support these invalidity arguments. Bayer succeeded in proving secondary considerations of non-obviousness, such as addressing a long-felt need and prior failed attempts by others to develop a similar product. The court emphasized that the burden of proof rested with Watson to establish patent invalidity, a standard it did not meet. As a result, the court ruled in favor of Bayer, confirming the validity of the patent claims and Watson’s infringement, thereby upholding Bayer’s patent rights against Watson’s ANDA submission for a generic version of Natazia®.

Legal Issues Addressed

Burden of Proof in Patent Invalidity

Application: The court emphasized that Watson bears the burden of proving the '577 patent's invalidity by clear and convincing evidence.

Reasoning: The excerpt reiterates that an issued patent is presumed valid under 35 U.S.C. § 282, necessitating 'clear and convincing evidence' to invalidate it.

Obviousness and Obviousness-Type Double Patenting

Application: The court found that Watson did not provide clear and convincing evidence to invalidate the '577 patent claims on grounds of obviousness-type double patenting or general obviousness.

Reasoning: The Court also found that Watson did not provide clear and convincing evidence to invalidate these claims on grounds of obviousness-type double patenting or general obviousness.

Patent Infringement and Validity

Application: Bayer alleged that Watson infringed the '577 patent, and the court found Watson's products infringe claims 1-3 of the '577 patent.

Reasoning: Following a bench trial in December 2014 and subsequent post-trial briefing, the Court determined that Watson's proposed products infringe claims 1-3 of the ’577 patent.

Secondary Considerations of Non-Obviousness

Application: Bayer successfully demonstrated secondary considerations of non-obviousness, including evidence of others' failures and a long-felt but unmet need.

Reasoning: Bayer's evidence of secondary considerations of non-obviousness reinforces the court's conclusion that Watson did not meet the clear and convincing standard for obviousness.