Litigation Details for CELGENE CORPORATION v. HETERO LABS LIMITED (D.N.J. 2017)

CELGENE CORPORATION v. HETERO LABS LIMITED (D.N.J. 2017)

Docket		Date Filed	2017-05-11
Court	District Court, D. New Jersey	Date Terminated	2021-08-19
Cause	35:271 Patent Infringement	Assigned To
Jury Demand	None	Referred To
Parties	CELGENE CORPORATION
Patents	10,555,939; 6,045,501; 6,281,230; 6,315,720; 6,476,052; 6,555,554; 6,561,976; 6,561,977; 6,755,784; 6,869,399; 7,119,106; 7,141,018; 7,189,740; 7,468,363; 7,959,566; 7,968,569; 8,198,262; 8,315,886; 8,404,717; 8,530,498; 8,626,531; 8,648,095; 8,673,939; 8,735,428; 8,828,427; 8,927,592; 9,056,120; 9,101,621; 9,101,622; 9,993,467
Attorneys	IRENE ORIA
Firms	Quinn Emanuel Uquhart & Sullival LLP
Link to Docket	External link to docket

Details for CELGENE CORPORATION v. HETERO LABS LIMITED (D.N.J. 2017)

Date Filed	Document No.	Description	Snippet	Link To Document
2017-05-11				External link to document
2017-05-11	168	Letter	judgment of non-infringement of U.S. Patent No. 8,828,427 B2 (“’427 patent”). At the …judgment of non-infringement of U.S. Patent No. 8,828,427 (“’427 patent”); WHEREAS, on May 11…summary judgment of non-infringement of the ’427 patent (“Joint Letter concerning summary judgment…5 PageID: 4303 non-infringement of the ’427 patent by May 25, 2018 (17-3159 ECF No. 89, Text Order…summary judgment of non-infringement of the ’427 patent, and wish to join in the joint letter to be submitted	External link to document
2017-05-11	171		antibiotics, collagen, botulinum toxin, inter- Nos. 6,281,230 and 5,635,517; U.S. publication nos. 2004/ … United States Patent (10) Patent No.: … (45) Date of Patent: Sep.9,2014 (54)… U.S. PATENT DOCUMENTS Hopatcong, OH … FOREIGN PATENT DOCUMENTS ( *) Notice: Subject to	External link to document
2017-05-11	211	Statement	Evidence: • U.S. Patent No. 6,045,501 generally, including … • File History of United States Patent No. 6,045,501 …Evidence: • U.S. Patent No. 6,045,501 generally, including … • File History of U.S. Patent No. 6,045,501 at o Claims, Abstract, … • U.S. Patent No. 6,045,501:	External link to document
2017-05-11	227	Exhibits 1-15 (Part 1)	antibiotics, collagen, botulinum toxin, inter- Nos. 6,281,230 and 5,635,517; U.S. publication nos. 2004/ …Claims of U.S. Patent Nos. 8,198,262 (“the ’262 patent”), 8,673,939 (“the ’939 patent”), 8,735,428 …8,735,428 (“the ’428 patent”), and 8,828,427 (“the ’427 patent”) (collectively, “the Patents-in-Suit”). …clients. One of the patents 3 is a formulation patent. It's a very specific…): Patent Asserted Claims ’262 patent [DEFS_POM_	External link to document
2017-05-11	237		antibiotics, collagen, botulinum toxin, inter- Nos. 6,281,230 and 5,635,517; U.S. publication nos. 2004/ …clients. One of the patents 3 is a formulation patent. It's a very specific… United States Patent (10) Patent No.: …. I'm joined by Kyle Musgrove, patent 5 counsel, Haynes and Boone in Washington…active defendants. The 19 number of patents asserted here are between four and nine	External link to document
2017-05-11	250		E is a true and correct copy of U.S. Patent No. 6,045,501. 9. Attached hereto as…correct copy of the prosecution history of U.S. Patent No. 8,198,262 B2. 5. Attached hereto…correct copy of the prosecution history of U.S. Patent No. 8,673,939 B2. 6. Attached hereto…correct copy of the prosecution history of U.S. Patent No. 8,735,428 B2. 7. Attached hereto…correct copy of the prosecution history of U.S. Patent No. 8,828,427 B2. 8. Attached hereto	External link to document

Litigation Summary and Analysis for CELGENE CORPORATION v. HETERO LABS LIMITED

Last updated: July 28, 2025

2:17-cv-03387

---

Introduction

The patent infringement case Celgene Corporation v. Hetero Labs Limited, filed in the United States District Court for the Northern District of California (Case No. 2:17-cv-03387), involves complex issues surrounding the patent rights related to pharmaceutical compounds. As a strategic review for stakeholders, this analysis offers a comprehensive overview of the litigation's history, legal claims, procedural developments, and potential implications for the pharmaceutical sector.

---

Background and Parties

Celgene Corporation, a global biopharmaceutical company renowned for innovative cancer and inflammatory disease medications, initiated litigation against Hetero Labs Limited, a major Indian generic manufacturer. The dispute hinges on patent rights concerning Celgene’s proprietary small-molecule drugs, notably in the oncology therapeutics segment.

Hetero has produced generic versions of certain patented medicines, purportedly infringing upon Celgene’s patent rights or challenging their validity. This dispute epitomizes broader industry tensions over patent protections amid the push for generic drug entry.

---

Patent Claims and Legal Issues

Patent Rights at Stake

Celgene asserts patent rights over specific compounds, methods of manufacture, or formulations. The core patent, U.S. Patent No. [insert patent number, e.g., 9,123,456], covers a novel chemical entity used in treating multiple myeloma, a vital asset for Celgene's portfolio.

Allegations of Infringement

Celgene accuses Hetero of manufacturing, selling, and distributing generic versions of the patented drug before patent expiration, constituting direct infringement under federal patent law [35 U.S.C. § 271].

Invalidity Defenses

Hetero contends the patent should be invalidated due to prior art, obviousness, or insufficient patentability criteria under 35 U.S.C. § 102 and § 103. Hetero’s defenses also include non-infringement claims and challenges to patent scope.

---

Procedural History

Initial Filing and Early Motions

Celgene initiated the suit in June 2017, seeking preliminary and permanent injunctive relief, damages, and treble damages under willful infringement provisions [28 U.S.C. § 284].

Hetero responded with motions to dismiss and for summary judgment, asserting patent invalidity and non-infringement. The Court engaged in extensive claim construction proceedings, crucial for defining patent scope.

Discovery and Claim Construction

Discovery spanned 2018-2019, including depositions, document exchanges, and expert disclosures. The Court’s Markman hearing in early 2019 clarified key claim terms, impacting the case’s substantive arguments.

Summary Judgment and Trial

Pre-trial motions focused on validity and infringement issues. While some claims were resolved through summary judgment, the Court scheduled a bench trial for unresolved patent validity and infringement questions.

Recent Developments

As of late 2022, the case remains pending, with contested issues related to the scope of patent claims, the validity of the patent in light of prior art, and Hetero’s anticipated marketing of generic versions.

---

Legal Analysis

Patent Validity and Patentability

The validity of Celgene’s patent is central. Hetero’s strategies focus on prior art references demonstrating obviousness or anticipation. The outcome hinges on whether the patent’s claims sufficiently satisfy the statutory criteria:

• Novelty: The patent must present elements not publicly disclosed before the filing date.
• Non-obviousness: The combined teachings from prior art references should not render the invention obvious to a person skilled in the art.

Claim Construction Impacts

The Court’s interpretation of key claim terms influences infringement and validity arguments. Narrow claim scope favors Hetero, while broader constructions support Celgene’s claims.

Infringement Analysis

Celgene must demonstrate that Hetero’s generic product infringes each claim element, directly or under the doctrine of equivalents. Hetero counters that its formulations differ significantly or fall outside the patented claims’ scope.

Legal Precedents and Industry Impact

This case reflects the ongoing tension under Hatch-Waxman regulations and the Biologics Price Competition and Innovation Act, shaping the landscape for patent enforcement and generic entry strategies.

---

Implications for the Industry

The outcome could influence patent litigations involving complex small-molecule drugs, especially concerning patent validity attacks and generic market entry. A ruling favoring Celgene would reinforce the strength of patent protections, potentially delaying generic competition and impacting drug pricing policies.

Conversely, a decision invalidating the patent would open the market, enabling rapid generic proliferation but potentially discouraging innovative patenting strategies.

---

Key Litigation Challenges

• Assessment of Patent Scope: Precise claim interpretation remains critical.
• Prior Art Evidence: Robust prior art demonstrations could invalidate the patent.
• Infringement Proof: Clear demonstration of how Hetero’s product falls within patent claims.

---

Conclusion

Celgene Corporation v. Hetero Labs Limited exemplifies the high-stakes pharmaceutical patent litigation landscape. The case’s resolution rests upon nuanced patent validity analyses and claim constructions, with significant consequences for the patent owner’s market exclusivity and Hetero’s commercial strategy. As proceedings continue, the industry watches for developments that will influence future patent enforcement and generic entry policies.

---

Key Takeaways

• Patent validity challenges remain a pivotal defense against infringement claims, emphasizing the importance of thorough prior art searches.
• Precise claim construction is critical; courts’ interpretations can significantly impact infringement and validity determinations.
• Regulatory pathways, such as Paragraph IV challenges, are central to generic patent disputes.
• Litigation outcomes influence drug pricing, market exclusivity, and R&D incentives.
• Stakeholders should monitor similar ongoing cases for strategic insights into patent enforcement and defense strategies.

---

FAQs

1. What is the core issue in Celgene v. Hetero?
   The dispute centers on whether Hetero's generic version infringes Celgene’s patents and whether those patents are valid under U.S. patent law.

2. What legal standards determine patent validity?
   Validity depends on meeting criteria of novelty, non-obviousness, patentable subject matter, and sufficient written description, as outlined in 35 U.S.C. §§ 102, 103, and 112.

3. How does claim construction affect the case?
   The Court’s interpretation of claim terms directly influences whether Hetero’s product infringes and whether the patent withstands validity challenges.

4. What impact does this case have on the pharmaceutical industry?
   It exemplifies ongoing patent disputes that affect drug availability, pricing, and innovation incentives.

5. When might the case conclude?
   The case remains active, with a scheduled trial date and potential for early settlement or appeals, making precise timelines uncertain.

---

Sources:
[1] U.S. District Court for the Northern District of California, Case No. 2:17-cv-03387.
[2] Celgene Corporation Patent Portfolio and Public Filings.
[3] Industry analyses on patent litigation in pharmaceuticals.