08-464

IN THE UNITED STATES DISTRICT COURTFOR THE DISTRICT OF DELAWAREBRIGHAM AND WOMEN'S HOSPITAL:CIVIL ACTIONINC., et al.::v.::TEVA PHARMACEUTICALS USA, INC.,:et al.:NO. 08-464MEMORANDUMBartle, C.J.March 31, 2010Brigham and Women's Hospital, Inc. ("BWH"), NPSPharmaceuticals, Inc. ("NPS"), and Amgen Inc. ("Amgen")(collectively "plaintiffs") have sued Teva Pharmaceuticals USA,Inc., Teva Pharmaceutical Industries Ltd., and Barr Laboratories,Inc. (collectively "defendants") for infringement ofpharmaceutical patents No. 6,211,244 (the "'244 patent"),6,313,146 (the "'146 patent"), 6,011,068 (the "'068 patent"), and6,031,003 (the "'003 patent"). Plaintiffs are each assignees ofone or more of the patents in suit. These patents pertain to thepharmaceutical compound cinacalcet hydrochloride, which is usedfor treating secondary hyperparathyroidism and hypercalcemia,diseases common in patients on dialysis for chronic renalfailure.

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1. Plaintiff Amgen currently markets cinacalcet hydrochlorideunder the trade name Sensipar.

Defendants each filed an amended answer to plaintiffs'complaint in which they have denied infringement and raised theaffirmative defense of inequitable conduct before the UnitedStates Patent and Trademark Office ("PTO"). In theircounterclaims, defendants also seek a declaration that thepatents in suit are unenforceable due to plaintiffs' inequitableconduct. Now before the court is the motion of defendants for anorder finding that plaintiffs have waived the attorney-clientprivilege.

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I.Defendants maintain that plaintiffs engaged ininequitable conduct during the prosecution of the '146, '068, and'003 patents when they failed to cite to the respective patentexaminers the then pending application that led to the '244patent (the "'244 Application"). According to defendants,plaintiffs intentionally withheld information regarding the '244Application in order to extend unlawfully the patent terms of the'146, '068, and '003 patents.To be patentable, an invention must be novel, that is,it must not be anticipated by prior art. See 35 U.S.C. § 102;

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2. We have jurisdiction under 28 U.S.C. §§ 1331 and 1338.3. "A person shall be entitled to a patent unless (a) theinvention was known or used by others in this country, orpatented or described in a printed publication in this or aforeign country, before the invention thereof by the applicantfor patent, or (b) the invention was patented or described in aprinted publication in this or a foreign country or in public useor on sale in this country, more than one year prior to the date(continued...)-2-

Minnesota Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301(Fed. Cir. 2002). Further, "[a] patent may not be obtained ...if the differences between the subject matter sought to bepatented and the prior art are such that the subject matter as awhole would have been obvious at the time the invention was madeto a person having ordinary skill in the art to which saidsubject matter pertains." 35 U.S.C. § 103(a). The relevantregulations require that "[e]ach individual associated with thefiling and prosecution of a patent application has a duty ofcandor and good faith in dealing with the [PTO], which includes aduty to disclose to the Office all information known to thatindividual to be material to patentability." 37 C.F.R.§ 1.56(a).Inequitable conduct involves an intentional breach ofthe duty of candor. This occurs when an applicant, "with intentto mislead or deceive the examiner, fails to disclose materialinformation or submits materially false information to the PTOduring prosecution." Digital Control Inc. v. Charles Mach.Works, 437 F.3d 1309, 1313 (Fed. Cir. 2006). For a patent to berendered unenforceable due to inequitable conduct, the court mustfind clear and convincing evidence that: (1) the applicant hasfailed to disclose certain material information to the PTO, and(2) such nondisclosure was done with deceptive intent. Akron3.(...continued)of the application for patent in the United States." 35 U.S.C.§ 102.-3-