Paul Hastings’ IP Practice Notches Trial Win for Mitsubishi Tanabe Pharma Corporation

March 25, 2021

Case was first-ever completely virtual Hatch-Waxman trial in District of New Jersey

New York – Paul Hastings LLP, a leading global law firm, secured a precedent-setting victory on behalf of Mitsubishi Tanabe Pharma Corporation (MTPC) in what was the first virtual Hatch-Waxman litigation to be tried remotely from start to finish in the United States District Court for the District of New Jersey, and one of the first nationally.

Earlier this week, the District of New Jersey ruled in the Plaintiffs’ favor after more than three years of litigation regarding three Orange Book-listed patents covering endocrinology drugs Invokana® and Invokamet®, which are sold by MTPC’s marketing partner Janssen Pharmaceuticals, Inc. Five generic producers originally challenged these patents, and all except for Zydus Pharmaceuticals Inc. relinquished their invalidity defenses after a rigorous fact and expert discovery process.

The trial against Zydus on the issues of obviousness and obviousness-type double patenting began in September of last year, after a delay due to the COVID-19 pandemic, and was the first bench trial conducted remotely in the District of New Jersey. After seven total days of virtual testimony and argument before Chief Judge Freda Wolfson, the Court found that the patents-in-suit are not invalid as obvious and that the latest-expiring patent is not invalid for obviousness-type double patenting. In making the latter ruling, Judge Wolfson rejected Zydus’s argument that the 1,079-day patent term adjustment attached to one of the patents-in-suit constituted double patenting.

The case is captioned Mitsubishi Tanabe Pharma Corporation, et al. v. Sandoz Inc., et al. (D.N.J. C.A. No. 17-5319). The Paul Hastings team was led by IP practice global vice-chair and New York partner Eric Dittmann, and included New York partner Isaac Ashkenazi, New York counsel Dana Weir, and New York associates Max Yusem, Katie Daniel, and Mike Werno. Charles Lizza, Sarah Sullivan, William Baton, and Alexander Callo of Saul Ewing Arnstein & Lehr LLP were NJ counsel representing the Plaintiffs.

Paul Hastings’ Intellectual Property practice advises clients on important, complex IP matters, providing innovative solutions for our clients’ challenges with a track record of success in high-stakes, bet-the-company patent and trade secret litigation and other IP disputes in trial and appeals courts, at the PTAB and the ITC, and in arbitral tribunals.

The practice is ranked by Chambers and Partners, IAM, The Legal 500, Managing IP, and Benchmark Litigation in various areas, including patent, trade secrets, ITC litigation, and PTAB practice, as well as by BTI Consulting as a “Go-To Litigation Firm” and “Best for Complex IP Litigation” in its annual “Intellectual Property Outlook” report. Paul Hastings IP lawyers have been selected numerous times as Law360’s “Most Valuable Players”; and as Trailblazers by The National Law JournalThe RecorderThe New York Law Journal, and The Daily Journal

At Paul Hastings, our purpose is clear — to help our clients and people navigate new paths to growth. With a strong presence throughout Asia, Europe, Latin America, and the U.S., Paul Hastings is recognized as one of the world’s most innovative global law firms.

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