Pfizer Inc. announced today a $2.15 billion settlement reached
with Teva Pharmaceuticals Industries, Limited and Sun
Pharmaceutical Industries, Limited for patent-infringement damages
resulting from their "at-risk" launches of generic
Protonix® in the United States. The settlement comes after a
nearly 10-year legal battle in which Pfizer and Nycomed (now part
of Takeda) sought to enforce the patent for its blockbuster acid
reflux medicine. Pfizer and Takeda will divide the proceeds of the
settlement with Pfizer receiving 64 percent. WilmerHale represented
Pfizer and Takeda in this matter.
"We are pleased with today's settlement, which recognizes
the validity and value of the innovation that led to
Protonix," said Amy W. Schulman, executive vice president and
general counsel of Pfizer. "Protecting intellectual property
is vital as we develop new medicines that save and enhance
patients' lives."
Under the terms of the settlement, Teva and Sun will pay a total
of $2.15 billion to compensate Pfizer's subsidiary Wyeth and
Takeda for the damages they suffered when Teva and Sun launched
"at-risk" generic versions of Protonix prior to the
January 2011 expiry of the patent for pantoprazole, the active
ingredient in Protonix. These "at-risk" launches were
determined by a jury in New Jersey federal court to violate United
States Patent No. 4,758,579, which is owned by Takeda and was
licensed exclusively to Wyeth in the United States. The parties
reached the settlement shortly after the commencement of a trial to
determine damages in the same New Jersey federal court.
Teva will pay Pfizer and Takeda $1.6 billion and Sun will pay $550
million. Teva will pay $800 million in 2013 and the remaining $800
million by October 2014; Sun's entire payment will be made in
2013. As part of the settlement, both Teva and Sun have admitted
that their sales of generic pantoprazole infringed the patent that
was held valid by the court.
"Today's settlement reflects our resolve to enforce our
patents both in and out of the courtroom," Schulman said.
"We are proud of the work of the scientific colleagues who
developed this medicine and the lawyers who defended
it."
The WilmerHale team representing Pfizer and Takeda includes
Partners Bill Lee, Amy Wigmore and Bill McElwain; Special
Counsels Tracey Allen and Heath Brooks; Counsel Perry Lange; Senior
Associate Deborah Yates; Associates Brittany Amadi, Jeff Hantson
and Allison Berkson; and Staff Attorneys Ian Foxworth and Cathy
Rogers. Partner Greg Lantier also assisted the team during
discovery and trial preparation. Invaluable assistance was also
provided by IP Litigation Case Manager Lanta Chase, as well as
Jennifer Poorvu, Colette Owens and Dale Warfield.
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