On April 11, 2019, the District Court for the District of Delaware ruled in favor of Venable Fitzpatrick’s clients Novartis Pharmaceuticals Corporation and Novartis AG, finding that Par Pharmaceutical, Inc. was estopped from maintaining its invalidity challenge against Novartis's U.S. Patent No. 5,665,772 ("the '772 patent"). The District Court held that because Par had previously challenged claims 1-3 and 8-10 of the '772 patent in an IPR proceeding that resulted in a final written decision (resolved in Novartis's favor), Par was estopped under 35 U.S.C. § 315(e)(2) from maintaining its District Court challenge to those claims. In reaching this decision, the District Court agreed with Novartis that the 27 pieces of prior art Par asserted in the litigation were raised or reasonably could have been raised in the IPR proceeding.
The '772 patent claims the compound everolimus, which is the active ingredient in Novartis's Zortress®, Afinitor®, and Afinitor Disperz® products.