The Warner-Lambert v. Actavis at The Supreme Court: Potential Implications on the Patent Infringement Landscape
The ongoing patent infringement litigation, Warner-Lambert v. Actavis, deals with the plausibility and breach of Warner-Lambert’s (Pfizer) second medical use patent for the use of blockbuster drug pregabalin, which the company markets under the name Lyrica®. The generic pregabalin product, Lecaent®, is currently being sold by Actavis. Recently, the UK Supreme Court heard the latest instalment of the continuing battle. Both the High Court and the Court of Appeal have ruled in favor of Actavis, however, the decision was appealed to the UK Supreme Court.
The consideration of plausibility by the UK Supreme Court is expected to have significant implications for pharmaceutical companies, especially for those who seek to protect new drug use through second medical use claims.
Join a panel of key thought leaders and professionals assembled by The Knowledge Group as they bring the audience to a road beyond the basics of bringing or defending against Patent Infringement claims in light of Warner-Lambert v. Actavis. They will also offer an in-depth analysis of the case’s implications on the patent infringement landscape as well as on patent applications. Speakers will also provide the audience with practical strategies in bringing out the best in these lawsuits in a rapidly evolving legal climate.
Key topics include:
- Warner-Lambert v. Actavis – An Overview
- Latest Updates and Developments
- Implications on Patent Application Filings and the Patent Infringement Landscape
- Lessons Learned
- Litigation Strategies
- What’s Next for the Pharma Industry?
Joanna Peak, Partner
Boult Wade Tennant LLP
- Background to the Warner-Lambert v Generics (UK) Ltd and Actavis patent dispute (introducing Lyrica and the patent at issue)
- Summary of events leading to the Supreme Court Hearing including:
- Generics claim for revocation
- Warner-Lambert’s claim for infringement
- First instance High Court decision
- Court of Appeal decision
- Competing policy considerations that contribute to this being such a high-profile case in the UK
- The issues considered by the Supreme Court:
- Plausibility in the context of assessing sufficiency
- The test to be applied in assessing infringement of second medical use claims
- The SC decision and what we can learn from it
Anita Varma, Partner
White & Case LLP
- A discussion on US law on 35USC § 112 relating to life sciences patents.
- Written Description;
- Compare & Contrast to the UK Standards
- Patentability & Enforceability Considerations for Second Medical Use Claims in the US
Who Should Attend:
- Patent Attorneys
- Patent Litigators
- Intellectual Property Attorneys
- In-House Counsel
- IP Consultants and Experts
- Patent Owners
- Product Managers
- Other related and interested professionals
Anita Varma is an Intellectual Property partner based in the Firm's Boston office, with a dual practice in London. She is qualified to practice before the US Patent and Trademark Office (USPTO) and the European Patent Office (EPO).
Anita provides strategic patent counseling to life sciences industry companies, guiding them through every stage of the patent life cycle. She works with clients in obtaining enforceable claims and supporting them in post-grant proceedings, as well as in developing and executing both offensive and defensive patent strategies. She also conducts strategic review of patent portfolios to identify strengths and weaknesses, and opportunities to minimize threats and maximize revenue.
As part of this strategic counseling, Anita regularly advises on patentability, validity and freedom to operate issues, provides pre-litigation assessments and opinions regarding patentability, conducts IP due diligence for strategic transactions, and advises on listing and delisting matters in the US Food & Drug Administration's Orange Book.
Clients also benefit from Anita's experience in navigating follow-on biologics legislation. She has skilled expertise among diverse life sciences subjects, including immunology, antibodies, RNAi, small molecules, biotechnology, pharmaceuticals, CRISPR, ocular products, biophotonics, messenger RNA therapeutics, protein therapeutics, and protein traps.
Anita is named one of the top lawyers in the United States for patent prosecution matters (Legal 500), and is viewed by competitors as "an extremely skilled attorney with both legal and business smarts" (LMG Life Sciences). Clients appreciate her "'business savvy' approach and her familiarity with the biotechnology and pharmaceutical industries" and note that "the experience [of working with Anita] has been very positive" (independent survey by Chambers & Partners).
Prior to joining White & Case, Anita was a partner at an international law firm.
Anita Varma is an Intellectual Property partner based in the Firm's Boston office, with a dual practice in London. She …
Joanna, Partner, is a Chartered Patent Attorney and European Patent Attorney in the Biotechnology and Life Sciences Group.
Joanna has extensive experience of preparing and prosecuting patent applications before the UK and European Patent Offices. She regularly assists clients with managing global patent portfolios and providing commercial advice, including the preparation of freedom-to-operate opinions. She has also represented clients at oral proceedings before the European Patent Office at both first and second instance. Joanna works with a range of organisations from universities and SMEs through to multinational pharmaceutical companies.
Joanna has a PhD from the University of London. Her doctoral research, carried out at The Institute of Cancer Research, investigated the role of key molecules implicated in tumour invasion and metastasis.
Joanna also has an MA Cantab (Natural Sciences) and an MSci Biochem, both from the University of Cambridge.
Joanna, Partner, is a Chartered Patent Attorney and European Patent Attorney in the Biotechnology and Life Sciences Group. Joanna has extensive …
Print and review course materials
Method Of Presentation:
Experience in patent infringement litigation
NY Category of CLE Credit:
Areas of Professional Practice
Unlock All The Knowledge and Credit You Need
Leading Provider of Online Continuing Education
It's As Easy as 1, 2, 3
Get Your 1-Year All Access Pass For Only $199
About White & Case LLP
White & Case is a truly global law firm, uniquely positioned to help our clients achieve their ambitions in today's G20 world.
As a pioneering international law firm, our cross-border experience and diverse team of local, US and English-qualified lawyers consistently deliver results for our clients.
In both established and emerging markets, our lawyers are integral, long-standing members of the community, giving our clients insights into the local business environment alongside our experience in multiple jurisdictions.
We work with some of the world's most respected and well-established banks and businesses, as well as start-up visionaries, governments and state-owned entities.
About Boult Wade Tennant LLP
Boult Wade Tennant is a specialist Patent and Trade Mark firm. We exist to help individuals and businesses protect, manage and enforce their intellectual property rights on a global scale.
Our aim is simple - we aim to work with our clients, not just for them. This means we place emphasis not only on the quality of our work but also on the quality of the service we provide. Our award winning approach is down-to-earth and jargon-free. Our attorneys are renowned for being committed to helping our clients succeed and for providing a service that is focussed and aligned with our clients’ commercial objectives.