Jury Awards Infosint $15M In Lexapro Patent Fight

By Evan Weinberger

Law360, New York (October 19, 2009) -- Lundbeck A/S and Forest Laboratories Inc. will have to pay Infosint SA a $15 million reasonable royalty award now that a federal jury has ruled that Infosint's patent for making the antidepressant citalopram is valid.

A jury in the U.S. District Court for the Southern District of New York on Thursday found that a process used by Lundbeck for making racemic citalopram and escitalopram, the active ingredients in the antidepressant, infringed Infosint's patented process for making 5-carboxyphthalide, a starting material for the synthesis of citalopram.

Forest sells citalopram and a related antidepressant in the U.S. as Celexa and Lexapro through an agreement with Lundbeck.

The verdict was expected to be entered into the docket Monday.

“Infosint is a small company that develops and commercializes technology in the pharmaceutical industry, and we are happy that its rights have been vindicated,” said Maria Luisa Palmese, a partner at Kenyon & Kenyon LLP representing Infosint.

There are still several equitable defense questions pending before Judge Lewis A. Kaplan.

In April 2006, Switzerland-based Infosint accused the pharmaceutical duo of infringing U.S. Patent Number 6,458,973, which covers a process used to produce 5-carboxyphthalide.

The defendants hit back, arguing that a number of claims of the '973 patent interfere with the first claim of the Danish drugmaker's own U.S. Patent Number 6,403,813, which also describes a process to create the intermediate compound.

Though Infosint filed its U.S. patent application two days before Lundbeck did in 2000, the U.S. Patent and Trademark Office issued the '973 patent nearly four months earlier in June 2002.

Judge Kaplan in June refused to dismiss Infosint's claim that 5-carboxyphthalide, produced by Lundbeck supplier Blue Circle Corp. infringed Infosint's patent.

The defendants argued that Blue Circle made its version of the compound at temperatures below 110 degrees Celsius, which would avoid a limitation of the asserted claim of Infosint's patent requiring the mixture to be heated at 120 to 145 degrees Celsius.

But the only piece of evidence the defendants offered in support of that claim was a one-page letter sent in late 2007 from an unknown author listed only as an "authorized signatory" for Blue Circle. The letter lists three conditions of the manufacturing process, including a "reaction temperature of not more than 110 degrees Celsius," according to the opinion.

In late May, Judge Kaplan issued a mixed ruling on the defendants' bid for summary judgment, holding two claims of the '973 patent obvious but also invalidating the first claim of the '813 patent because the company had suppressed or concealed its invention.

Infosint has accused the companies of willful infringement and seeks injunctive relief, damages, attorneys' fees and costs.

In March, the court adopted a magistrate judge's report and recommendations on the claims construction for the '973 patent, over the defendants' objections.

Earlier in May, Judge Kaplan refused to limit Forest's liability for any infringement that occurred before Infosint sued through a law meant to protect "innocent infringers" before they know about a patent.

An attorney for Lundbeck and Forest directed questions to Forest, which could not be reached for comment.

The patents-in-suit are U.S. Patent Numbers 6,458,973; 6,703,516; and 6,403,813.

Infosint is represented by Kenyon & Kenyon LLP.

The defendants are represented by Kirkland & Ellis LLP.

The case is Infosint SA v. H. Lundbeck A/S et al., case number 1:06-cv-02869, in the U.S. District Court for the Southern District of New York.

--Additional reporting by Melissa Lipman