Amicus Brief on Behalf of Johnson & Johnson and Nagra Urges Federal Circuit to Grant En Banc Rehearing of Antibody Patent Decision

• Johnson & Johnson and Kudelski unit Nagra have filed an amicus brief supporting Eli Lilly's petition for an en banc rehearing by the U.S. Court of Appeals for the Federal Circuit, arguing that a recent panel decision reviving Teva Pharmaceuticals' migraine drug antibody patents creates confusion in the law and is inconsistent with the Supreme Court's landmark Amgen v. Sanofi decision.
• The amicus effort, led by an Orrick team, argues that all claim types must be treated equally when evaluating enablement or written description, and that the panel's opinion wrongly established that method of treatment claims can be treated differently than composition of matter claims.
• The brief was filed in Teva Pharmaceuticals International GmbH v. Eli Lilly and Company, in which a Federal Circuit panel revived Teva's patents to treating migraines - reversing a district court decision that had invalidated the patents for failing to meet written description and enablement requirements. Lilly's petition for rehearing garnered five amicus briefs from six leading companies, a university, and a group of scientists, all raising concerns about the panel's approach.
• The J&J/Nagra brief argued: "The Amgen court's treatment of composition of matter and method claim case law as a contiguous unit, combined with its explicit proclamation that '[t]here is one statutory enablement standard' leaves but one conclusion - all claim types must be treated equally when evaluating enablement or written description." The brief further argued: "Under this test, a claim to a genus and a claim to a method of using that genus must rise and fall together."

The Orrick team on the amicus effort is led by partners Irena Royzman, Clement Roberts and Alyssa Caridis. 

Read the Amicus Brief here

Read the Law360 Coverage here