This article originally ran in Law360 on September 3, 2020.
Perrigo Co. on Wednesday slammed AbbVie Inc.'s bid to send a Pennsylvania antitrust suit over a testosterone treatment to New Jersey, arguing that the Keystone State court already presided over the same claims brought by regulatory authorities.
While an agreement between the parties designates the Garden State as the forum for disputes, Perrigo urged the court in an opposition brief to consider this an exceptional case due to the court's familiarity with the allegations. Perrigo is claiming that AbbVie, a brand-name drug maker, engaged in "sham" patent infringement litigation to delay generic competition for its AndroGel testosterone treatment.
Perrigo noted that the Pennsylvania federal court conducted a three-week bench trial in a Federal Trade Commission case that also alleged an antitrust scheme rooted in sham patent litigation. The court, which ruled in favor of the FTC, issued more than 100 pages of fact findings and conclusions of law, Perrigo's brief said.
"It would be a substantial and unwarranted waste of resources to cause another court to take on Perrigo's lawsuit against the same defendants arising out of the same conduct," Perrigo said, citing a Louisiana federal court's 2015 decision in Bollinger Shipyards Lockport LLC v. Huntington Ingalls Inc.
In the Bollinger case, a judge declined to enforce a forum selection clause due to the court's substantial prior involvement in the matter.
Perrigo further argued that the case congestion in New Jersey federal court, which is undergoing a judicial vacancy emergency, likewise weighs against a transfer.
In its Aug. 3 bid to transfer to the case, AbbVie pointed to the forum selection clause in the settlement agreement resolving the underlying patent litigation. The agreement specified New Jersey state and federal courts as the venue for all disputes arising from the matter.
AbbVie emphasized U.S. Supreme Court jurisprudence in favor of forum selection clauses, even over concerns of efficiency and judicial economy. The company invoked the high court's 2013 decision in Atlantic Marine Construction Co. v. U.S. District Court , holding that forum selection clauses must be enforced except in the most unusual cases.
Both Perrigo and the FTC claim that AbbVie and Besins Healthcare Inc. launched lawsuits accusing Teva Pharmaceuticals USA Inc. and Perrigo of using certain penetration enhancers — components used to accelerate drug delivery through the skin — that were similar to claims in a patent held by AbbVie and Besins, and therefore infringed the patent under the doctrine of equivalents.
The generic-drug companies alleged the brand-name drug makers knew the now-settled patent suits were baseless because the brand-name companies had amended the AndroGel formula to exclude the penetration enhancers used by the generics. The purpose of the patent suits was to hold up the regulatory approval process for the generic competitors, Perrigo and the FTC alleged.
The FTC action was filed in 2014 and is pending before the Third Circuit. Perrigo launched its suit in May.
Representatives for the parties did not immediately respond to requests for comment.
Perrigo is represented by Nicholas M. Centrella, Robert N. Feltoon and Andrew K. Garden of Conrad O'Brien PC.