Pharmacia and Pfizer Win Key Victory in Patent Case
By SCOTT HENSLEY
Staff Reporter of THE WALL STREET JOURNAL
Pharmacia Corp. and Pfizer Inc. won a victory in federal court that could spare them billions of dollars in royalty payments to the University of Rochester on sales of pain drugs such as Celebrex.
In a summary judgment, a judge in Rochester, N.Y., at the U.S. District Court for the Western District of New York, ruled invalid a university patent concerning both the use of medicines and discovery of new drugs that selectively inhibit an enzyme in the body known as Cox-2.
As soon as the university received its patent in April 2000, it sued Pharmacia, arguing that Celebrex took advantage of a biochemical pathway the university had discovered years before.
At the time, the university estimated it could result in billions of dollars in royalty payments and could become the most lucrative pharmaceutical patent ever. The novel patent spawned imitators in biological research, and the closely watched case could set a precedent that could narrow the conceptual claims contained in such "use patents."
But in his opinion, the judge wrote the university patent was little more than "a wish, or plan or first step for obtaining a desired result" and doesn't offer a concrete invention, as required under federal patent law.
These so-called use patents were thought to represent a new frontier for protection of intellectual property in the drug industry. By essentially staking a claim on a method for influencing biology, this type of patent is designed to cover any medicine that acts through a particular biological pathway.
Pharmacia's G.D. Searle unit, which developed Celebrex, the first Cox-2 inhibitor drug, was the defendant in the case.
Richard Collier, general counsel for Pharmacia, Peapack, N.J., said in a written statement that the ruling confirms that the university's patent "was invalid on its face," and that "the university had no role in the discovery or development of Celebrex."
Gerald Dodson, a lawyer with Morrison & Foerster who represented the university, vowed to appeal, adding that the judge "disagrees with us on the law." Mr. Dodson said the case was destined to be decided in a higher court in any event, and that the summary judgment against the university, while disappointing, meant that the ultimate decision would be rendered more promptly.
Pfizer, based in New York, and Pharmacia jointly market two Cox-2 inhibitors, Celebrex and Bextra. Merck & Co., though it isn't a party to the case, makes Vioxx, a drug of the same general type. The patent is relevant for all Cox-2 inhibitors, which had more than $5 billion in U.S. sales last year. A spokesman for Merck, Whitehouse Station, N.J., called the decision "a positive outcome."
Kathleen Madden Williams, a patent lawyer with Palmer & Dodge in Boston who has no role in the case, said the federal ruling means that companies can't use a single early stage compound to block invention and development of potentially hundreds of drugs that rely on the same biological discovery.
Write to Scott Hensley at scott.hensley@wsj.com.
Updated March 6, 2003
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