FOREIGN PATENT FILING COSTS APOTEX $3.1 MILLION

A five-year old patent infringement case filed by Apotex backfired when a federal court dismissed the case and ordered the company to pay $3.1 million in attorneys fees after finding its patent invalid.

In a Feb. 26 court filing, Judge Avern Cohn of the U.S. District Court for the Eastern District of New York granted a request for legal fees made by Eon Labs in connection to patent litigation regarding its cyclosporin drug.

Apotex had filed a lawsuit claiming that the cyclosporin drug product made by Eon Labs infringes on its '333 patent covering water-soluble concentrates containing cyclosporin.

The patent, however, was ruled invalid because Apotex had previously obtained a patent with the same claims in New Zealand one year before obtaining a U.S. patent, according to court papers.

Under federal law, a U.S. patent loses its validity and enforceability if a patent covering the same invention (cyclosporine concentrates in this case) has been filed in a foreign country more than 12 months prior to the issuance of the U.S. patent, the judge said.

Eon initially sought $4.43 million in attorneys fees. The judge partly blamed Eon for the delay, saying the company should have discovered the discrepancy sooner, and lowered the award by 30 percent.

The judge called the case a "debacle" and said the manner in which the case was handled reflects "all that is bad in patent litigation."