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Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline LLC, et al.

Paid petition · United States Court of Appeals for the Federal Circuit, No. 2018-1976, 2018-2023 · judgment August 5, 2021


Certiorari denied · May 15, 2023
Pre-decision estimate: 8% cert probability (95% interval 5%–12%)

Before the decision, about 1.9× the 4.1% base rate. The model weighted this up for counsel who has won certiorari before, a dissent in the court below (flagged in the petition), and a Federal Circuit decision below, and down for a business respondent.

Question presented

Congress passed the Hatch-Waxman Act to “speed the introduction of low-cost generic drugs to the market.” Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S, 566 U.S. 399, 405 (2012). The Act embodies a carefully crafted legislative compromise. On the one hand, Congress bolstered patent terms for brand-name drug companies. On the other, it ensured that once a brand drug is no longer patented, the fact that some of the drug’s uses remain patented “will not foreclose marketing a generic drug for other unpatented [uses].” Id. at 415. Instead, a generic manufacturer can sell its product with a “skinny label” that “carves out” any patented uses found in the brand drug’s labeling— and thereby avoid inducing infringement of the brand manufacturer’s patent rights. See 21 U.S.C. § 355(j)(2)(A)(viii). To aid in this process, brand manufacturers must provide a sworn statement to FDA identifying “the specific section(s)” of their labeling “that describes the method of use” claimed by their patents. 21 C.F.R. § 314.53(c)(2)(i)(O)(2), (c)(2)(i)(P)(2). Those are the sections that generic manufacturers then carve out of their labeling in order to obtain FDA approval despite the brand manufacturer’s remaining patents. The question presented is: If a generic drug’s FDA-approved label carves out all of the language that the brand manufacturer has identified as covering its patented uses, can the generic manufacturer be held liable on a theory that its label still intentionally encourages infringement of those carved-out uses?

Counsel of record

For petitioner
William McGinley Jay
Goodwin Procter, LLP

For respondent
Juanita R. Brooks
Fish & Richardson

Case

Conference history
Distributed for 3 conferences

Amicus briefs
5 cert-stage

Linked docket
21A677

Proceedings

  1. May 15 2023
    Petition DENIED. Justice Kavanaugh would grant the petition for a writ of certiorari.
  2. May 08 2023
    DISTRIBUTED for Conference of 5/11/2023.
  3. Apr 12 2023
    DISTRIBUTED for Conference of 4/28/2023.
  4. Apr 11 2023
    Supplemental brief of respondents GlaxoSmithKline LLC, et al. filed. (Distributed)
  5. Mar 29 2023
    Brief amicus curiae of United States filed.
  6. Oct 03 2022
    The Solicitor General is invited to file a brief in this case expressing the views of the United States.
  7. Sep 07 2022
    DISTRIBUTED for Conference of 9/28/2022.
  8. Sep 07 2022
    Reply of petitioner Teva Pharmaceuticals USA, Inc. filed. (Distributed)
  9. Aug 19 2022
    Brief of respondents GlaxoSmithKline LLC, et al. in opposition filed.
  10. Aug 12 2022
    Brief amicus curiae of Alvotech filed.
  11. Aug 12 2022
    Brief amicus curiae of Mylan Pharmaceuticals Inc. filed.
  12. Aug 12 2022
    Brief amicus curiae of Association for Accessible Medicines filed.
  13. Aug 10 2022
    Brief amici curiae of 42 Professors of Law, Economics, Business, and Medicine filed.
  14. Jul 26 2022
    Motion to extend the time to file a response is granted and the time is extended to and including September 12, 2022.
  15. Jul 25 2022
    Motion to extend the time to file a response from August 12, 2022 to September 12, 2022, submitted to The Clerk.
  16. Jul 11 2022
    Petition for a writ of certiorari filed. (Response due August 12, 2022)
  17. May 03 2022
    Application (21A677) granted by The Chief Justice extending the time to file until July 11, 2022.
  18. Apr 29 2022
    Application (21A677) to extend the time to file a petition for a writ of certiorari from May 12, 2022 to July 11, 2022, submitted to The Chief Justice.