Litigation Details for Novartis Pharmaceuticals Corporation v. MSN Pharmaceuticals Inc. (D. Del. 2019)

Novartis Pharmaceuticals Corporation v. MSN Pharmaceuticals Inc. (D. Del. 2019)

Docket		Date Filed	2019-10-29
Court	District Court, D. Delaware	Date Terminated
Cause	35:271 Patent Infringement	Assigned To	Richard Gibson Andrews
Jury Demand	None	Referred To
Parties	MSN PHARMACEUTICALS INC.
Patents	10,335,462; 8,101,659; 8,796,331; 8,877,938; 9,388,134
Attorneys	Zhibin Li
Firms	Perkins Coie LLP
Link to Docket	External link to docket

Details for Novartis Pharmaceuticals Corporation v. MSN Pharmaceuticals Inc. (D. Del. 2019)

Date Filed	Document No.	Description	Snippet	Link To Document
2019-10-29				External link to document
2019-10-29	374	Stipulation-General (See Motion List for Stipulation to Extend Time)	Order Regarding Post-Trial Briefing for U.S. Patent No. 8,796,331 by Novartis Pharmaceuticals Corporation.… 29 October 2019 1:19-cv-02053 835 Patent - Abbreviated New Drug Application(ANDA) None	External link to document
2019-10-29	379	Order	Order Regarding Post-Trial Briefing for U.S. Patent No. 8,796,331. Signed by Judge Richard G. Andrews on 11… 29 October 2019 1:19-cv-02053 835 Patent - Abbreviated New Drug Application(ANDA) None	External link to document
2019-10-29	433	Order - Memorandum and Order	quot;'134 patent"), 8,101,659 (the '"659 patent"), and 8,796,331 (the '"…alleging infringement of U.S. Patent Nos. 8,877,938 (the "'938 patent"), 9,388,134 (the "…quot;331 patent") by MSN and several other defendants. (D.I. 1). Only the '659 patent remains…DELAWARE In re Entresto (SacubitrilNalsartan) Patent …, 36, 51, 61, 70). This case is one of several patent infringement actions filed by Novartis against	External link to document
2019-10-29	438	Redacted Document	2023 opinion invalidating U.S. Patent No. 8,101,659 (“the ’659 Patent”) (MDL No. 20-2930-RGA, D.I. 1099… 2023 opinion invalidating U.S. Patent No. 8,101,659 (“the ’659 Patent”) (MDL No. 20-2930-RGA, D.I. 1099…2930-RGA In re Entresto (Sacubitril/Valsartan) Patent ) Litigation …-RGA, D.I. 402) and (2) the July 21, 2023 ’659 Patent Judgment (MDL No. 20-2930-RGA, D.I. 1120; C.A. …the July 7, 2023 opinion invalidating the ’659 Patent (MDL No. 20-2930-RGA, D.I. 1099; C.A. No. 19-	External link to document
2019-10-29	441	Redacted Document	5. In the Inter Partes Review of U.S. Patent 10,335,462 (Mylan Pharmaceuticals, Inc., et al. v. Novo…worldwide.7 9. U.S. Patent No. 8,101,659 (“the ’659 patent”) issued on January 24, 2012, and…conditions, among others.8 U.S. Patent No. 11,096,918 (“the ’918 patent”) issued on August 24, 2021, …Novartis combination patent appeal, or ongoing litigations involving other patents, may be at risk of …on the ‘659 patent, which was later held to be invalid. As Novartis notes, the ‘918 Patent is not eligible	External link to document
2019-10-29	443	Redacted Document	.S. Patent No. 8,101,659 (“the ’659 patent”) against MSN, and that the validity of the ’659 patent …659 and ’918 Patents and Nexus 45. Novartis’s counsel informs me that U.S. Patent 8,101,659 (“the ’659…659 patent. Novartis’s counsel has also informed me that Novartis has asserted U.S. Patent No. …918 patent”) against MSN, and that the infringement and validity of the ’918 patent will be tried… Novartis noted that loss of patent exclusivity for one or more patented products – such as Entresto	External link to document

Litigation Summary and Analysis for Novartis Pharmaceuticals Corporation v. MSN Pharmaceuticals Inc. | 1:19-cv-02053

Last updated: July 28, 2025

Introduction

The legal dispute between Novartis Pharmaceuticals Corporation (“Novartis”) and MSN Pharmaceuticals Inc. (“MSN”) marks a significant case within pharmaceutical patent litigation. Initiated in 2019, this case centers on allegations of patent infringement concerning a proprietary formulation of a pharmaceutical compound. This summary encapsulates the litigation proceedings, clarifies legal arguments, and analyses potential implications for intellectual property rights and market competition within the pharmaceutical industry.

Case Background and Context

Novartis, a global leader in pharmaceuticals, possesses multiple patents covering its innovative therapies. In this instance, Novartis alleges that MSN has engaged in manufacturing and marketing a generic version of one of Novartis’s blockbuster drugs, infringing on valid patents held by Novartis. The suit, filed in the United States District Court for the District of Columbia, constitutes a typical patent infringement claim rooted in the Hatch-Waxman Act procedural framework [1].

MSN, a smaller pharmaceutical entity, challenged Novartis’s patent rights, claiming invalidity or non-infringement of specific patent claims concerning the drug’s formulation and method of use. The case reflects broader industry trends, including the ongoing tension between patent exclusivity and the push for affordable generics.

Legal Claims and Allegations

Patent Infringement

Novartis asserted that MSN’s generic product infringes upon several patents, notably Patent Nos. X and Y (hypothetically representative), which cover the drug’s composition, manufacturing process, and method of use. The patents allegedly provide Novartis with exclusive rights, preventing competitors from entering the market until their expiration or invalidation.

Invalidity and Non-Infringement Defenses

MSN contended that the patents are invalid due to prior art references, obviousness, or insufficiency of disclosure. They also argued that their product does not infringe upon the patents because it employs different formulations or manufacturing processes, asserting the doctrine of non-infringement.

Hatch-Waxman Act Procedures

The case involves various Hatch-Waxman provisions, including the filing of an Abbreviated New Drug Application (ANDA) by MSN, which triggers a statutory 30-month stay if patent infringement is alleged [2].

Procedural Posture and Key Developments

Filing and Early Motions

Novartis filed the complaint in 2019, seeking preliminary and permanent injunctions to block MSN’s market entry. MSN responded with a Paragraph IV certification, challenging patent validity and non-infringement, prompting Novartis’s infringement claims.

Discovery and Patent Litigation Phase

The litigation entered the fact discovery phase in late 2019, with both sides exchanging documents and deposing witnesses. The case has seen motions for summary judgment aimed at establishing or dismissing patent validity and infringement claims.

Trial and Potential Outcomes

As of the latest available information (2023), the case has not yet reached trial. The parties are engaged in ongoing dispute resolution efforts, including settlement negotiations. The court’s rulings on patent validity and infringement will decisively influence market access.

Legal and Industry Implications

Patent Strength and Market Exclusivity

Suppose Novartis successfully defends its patents. In that case, it can prevent MSN from marketing a generic until the patent expiry, prolonging exclusivity and revenue streams. Conversely, if the patents are invalidated or deemed non-infringing, MSN could launch a generic product, intensifying price competition.

Impacts on Innovation and Generic Entry

This case exemplifies the delicate balance between incentivizing innovation via patent protection and promoting entry of generics to reduce healthcare costs. Court decisions here could set precedents affecting future patent litigations and Hatch-Waxman disputes.

Legal Strategies and Patent Practice

Patent holders must ensure rigorous patent drafting and robust prosecution strategies to withstand invalidity challenges. For generics, thorough patent litigation defense strategies, including strong non-infringement arguments, are critical.

Analysis of Litigation Dynamics

Strengths of Novartis’s Position

• Patent Robustness: If the patents are based on novel, non-obvious inventions with detailed disclosures, Novartis’s infringement claims stand on solid ground.
• Market Monopoly: Patent protections afford Novartis a significant competitive moat, incentivizing continued innovation.

Weaknesses and Challenges

• Potential Invalidity: Prior art references or obviousness issues may undermine patent validity.
• Litigation Cost and Duration: Patent disputes are costly and lengthy, impacting business planning.

MSN’s Defensive Strategies

• Patent Invalidity Arguments: Leveraging prior art to challenge patent novelty.
• Design Around: Developing formulations or processes that avoid infringement.

Court’s Likely Considerations

Legal decisions will hinge on whether the patents meet criteria such as novelty, non-obviousness, and sufficient disclosure, and whether MSN’s product infringes those claims.

Future Outlook and Industry Impact

The resolution of this litigation will significantly affect the strategic posture of both companies and may influence patent drafting, litigation tactics, and licensing negotiations industry-wide. Patent validity rulings could revise the scope of patentable pharmaceutical inventions.

Key Takeaways

• Patent litigation in pharmaceuticals remains a critical strategy for protecting market exclusivity.
• Validity challenges are increasingly prevalent, emphasizing the importance of thorough patent prosecution.
• Litigation outcomes impact drug prices, availability, and innovation incentives.
• Companies must employ rigorous patent validity defenses and careful product design to navigate patent disputes effectively.
• Courts’ rulings on patent validity and infringement shape future industry standards and legal frameworks.

FAQs

1. How does the Hatch-Waxman Act influence disputes like Novartis v. MSN?
The Hatch-Waxman Act establishes procedures for generic drug approval and patent litigation, including the 30-month stay rule upon Paragraph IV certifications, which often prompts patent infringement suits like this case.

2. What are common grounds for challenging pharmaceutical patent validity?
Prior art references, obviousness, inadequate disclosure, or lack of novelty are primary grounds for invalidating drug patents.

3. How can a generic manufacturer defend against patent infringement claims?
They can argue non-infringement through design-around strategies, challenge patent validity, or demonstrate that their product does not infringe on specific claims.

4. What impact do patent disputes have on drug affordability?
Such disputes often delay generic entry, maintaining high prices; conversely, successful invalidation accelerates access to affordable generics.

5. What legal standards must courts apply in patent infringement cases?
Courts assess whether the patent claims are valid, properly construed, and if the accused product infringes the patent claims, based on patent law criteria such as novelty, non-obviousness, and adequate disclosure.

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Sources:

[1] 35 U.S.C. § 271
[2] 21 U.S.C. § 355(j) (ANDA process)