[Ip-health] LSIPR: AbbVie fights to invalidate Novartis patents

Thiru Balasubramaniam thiru at keionline.org
Wed Apr 5 23:52:07 PDT 2017


AbbVie fights to invalidate Novartis patents


AbbVie has filed a declaratory judgment against Novartis, alleging that its
patents covering the treatment of hepatitis C virus (HCV) are invalid.

Filed on Friday, March 31 at the US District Court for the Northern
District of California, the lawsuit claimed that the patents are invalid
because of recent US Supreme Court decisions focusing on patent-eligible
subject matter.

These cases include Mayo v Prometheus, Association for Molecular Pathology
v Myriad Genetics, and Alice v CLS Bank.

AbbVie said in its complaint: “The Supreme Court opinions exclude from
patent-eligible subject matter claims that are directed to ‘natural laws’
(including products of nature) because these discoveries are not patentable

In 2001, AbbVie started a programme to develop novel therapies to treat HCV.

At the time, AbbVie was aware that Novartis, then Chiron, was engaged in an
“aggressive” licensing programme and demanding that any company seeking to
undertake research in the area of HCV therapies obtain a licence to a
portfolio of HCV-related patents.

AbbVie had entered into a licence agreement with Novartis in 2002.

The company told the court that Novartis’s sole inventive contribution was
the identification of the “genomic sequence of naturally occurring HCV”.

According to AbbVie, “in Novartis’s own words regarding three patents at
issue in this case, which are representative of those in its portfolio:
‘The novel aspect of the invention of these three patents is the genomic
sequence of HCV.’”

AbbVie claimed that Novartis’s patents do not cover its HVC treatments
Viekira Pak (ombitasvir, paritaprevir and ritonavir), Viekira XR
(ombitasvir, paritaprevir, ritonavir and dasabuvir) and Technivie
(ombitasvir, paritaprevir and ritonavir).

According to AbbVie, at the time it entered into the agreement with
Novartis, the US Patent and Trademark Office was granting patents covering
naturally occurring protein and nucleic acid sequences, as well as
conventional methods for working with them.

However, after the Supreme Court’s rulings, the patents are now invalid
because they are related to a “natural product”, AbbVie said.

It added: “They are instead basic tools of scientific and technological
work. Allowing patents on such natural products would discourage the very
scientific activity that the patent laws are meant to encourage.”

AbbVie has asked the district court to enter a judgment that the
patents-in-suit are invalid due to obviousness.

The patents involved are US numbers 6,472,180; 5,712,088; 5,714,596;
5,863,719; 6,074,816; 6,096,541; 6,171,782; 6,027,729; 7,790,366;
5,922,857; and 6,057,093.

AbbVie has also asked the court for costs covering its attorneys’ fees.

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