[Ip-health] Rochester loses CAFC appeal on cox-2 patent case

[James Love]

http://www.democratandchronicle.com/biznews/0703MU4Q292_business.shtml

* What's at stake: The University of Rochester had hoped a drug patent
would earn millions of dollars that could be used to support its
research. Instead, UR has spent millions defending the patent and, so
far, has been turned down at every court level.

* In April 2000, the U.S. Patent and Trademark Office awarded UR a
patent for cox-2 inhibitors =97 drugs that can relieve pain and
inflammation without causing cramps and bleeding. UR officials and
others said then that it could become the most lucrative pharmaceutical
patent in history.

*  After the original award of the patent, UR sued Pfizer Inc. and
related companies for patent infringement for making drugs such as
Celebrex. . . . UR scientists discovered the gene that produces the
cox-2 enzyme and described the role it plays in producing inflammation
and pain. . . .

*  In February, a three-judge panel from the appeals court upheld a
March 2003 ruling by U.S. District Judge David G. Larimer in Rochester
that found the UR patent invalid. . . . Larimer denied the university=92s
claim of infringement. He declared the patent invalid because UR did not
produce a compound or pill. He described UR=92s patent as a =93wish or plan=
=94
and not an invention at all. In the appeal, the university argued the
decision expanded patent law and made far-reaching demands on
researchers to gain patent protection.


Appeals court rejects UR patent case


By Michael Wentzel
Staff Writer

(July 3, 2004) =97 The University of Rochester has only one option left in
its battle to secure the validity of a patent that was once thought to
be worth millions of dollars: the U.S. Supreme Court.

The U.S. Court of Appeals for the Federal Circuit in Washington, D.C.,
Friday denied UR=92s request for a hearing by the court=92s full panel of 1=
2
judges on the validity of a patent awarded the university for a new
class of drugs that included Celebrex, which had more than $3 billion in
sales last year.

In February, a three-judge panel from the appeals court upheld a March
2003 ruling by U.S. District Judge David G. Larimer in Rochester that
found the UR patent invalid.

In Friday=92s ruling, four of the 12 judges dissented and five wrote
opinions, a university spokesman said. UR needed a majority just to get
another hearing.

UR said it would not make a decision on a final appeal to the Supreme
Court until the opinions were studied.

=94This is obviously disappointing, although the fact that there are five
separate opinions written confirms the view that this is a major issue
of patent law,=94 said UR President Thomas H. Jackson, who got a
commitment from the UR board of trustees four years ago for an
eight-figure fund to enforce and defend the patent.

There is no guarantee the Supreme Court would even agree to hear the case.

In April 2000, the U.S. Patent and Trademark Office awarded UR a patent
for cox-2 inhibitors =97 drugs that can relieve pain and inflammation
without causing cramps and bleeding. UR officials and others said then
that it could become the most lucrative pharmaceutical patent in history.

After the original award of the patent, UR sued Pfizer Inc. and related
companies for patent infringement for making drugs such as Celebrex. The
university hoped to earn millions of dollars in royalty payments over
the life of the patent. The money primarily would have supported
research, UR said.

UR scientists discovered the gene that produces the cox-2 enzyme and
described the role it plays in producing inflammation and pain.

Larimer denied the university=92s claim of infringement. He declared the
patent invalid because UR did not produce a compound or pill. He
described UR=92s patent as a =93wish or plan=94 and not an invention at all=
.
In the appeal, the university argued the decision expanded patent law
and made far-reaching demands on researchers to gain patent protection.

MWENTZEL@DemocratandChronicle.com

What's at stake
The University of Rochester had hoped a drug patent would earn millions
of dollars that could be used to support its research. Instead, UR has
spent millions defending the patent and, so far, has been turned down at
every court level.

--
James Love, Director, Consumer Project on Technology
http://www.cptech.org, mailto:james.love@cptech.org
tel. +1.202.387.8030, mobile +1.202.361.3040