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Teva Must Pay Pfizer's Attorney Fees

October 25, 2011 | Posted in : Defense Fees / Costs, Fee Entitlement / Recoverability, Fees as Sanctions

A recent NLJ story, “Teva Must Pay Pfizer $378K in Attorney Fees for Pursuing ‘Frivolous’ Claim in Case Over Viagra Patent” reports that a Virginia federal judge has slapped Teva Pharmaceuticals USA Inc. with an order to pay $378,285 of Pfizer Inc’s attorney fees for its litigation conduct during Pfizer’s case claiming Teva infringed its patent that underpins Viagra.  Pfizer asked for, and U.S. District Court Judge Rebecca Beach Smith of the Eastern District of Virginia awarded fees based on the recent seminal ruling by the U.S. Court of Appeals for the Federal Circuit, Therasense Inc. v. Becton Dickinson & Co.

Pfizer sued Teva in March 2010 for infringing its patent for an erectile dysfunctrion treatment that is the basis for Viagra.  In two different court filings, Teva claimed Pfizer committed inequitable conduct because its attorneys persuaded the U.S. Patent and Trademark Office to issue overbroad claims related to the treatment of erectile dysfunction in a “male animal,” even though it “disclaimed nearly identical subject matter in a related counterpart Canadian patent” in November 2002, just 17 days after the U.S. patent issued.

Although Pfizer would not be able to collect attorney fees if Teva prevails in its Federal Circuit appeal of the patent case, “this court is not persuaded that it should delay ruling on Pfizer’s motion,” Smith wrote in her opinion.  Smith wrote that “Teva must have known that its inequitable conduct claim, far from being even remotely supported by clear and convincing evidence, was objectively baseless.  Smith also found that “Teva’s continued litigation of its claim for inequitable conduct after the Federal Circuit’s decision in Therasense was “frivolous” and an exceptional case that warranted an award of attorney fees.