BALTIMORE, MD.  —  Last week, the City of Baltimore filed suit to recover triple money damages and attorneys’ fees on behalf of itself and others similarly situated, from Janssen Biotech, Inc. Janssen Oncology, Inc., Janssen
Research & Development, LLC, and BTG International Limited (collectively “Janssen”). The City alleges that Janssen pursued sham litigation in order to delay entry to the market of generics, which would undercut the price and reduce sales for its billion-dollar prostate cancer drug, Zytiga. In 2017 and 2018 alone Zytiga sales were 3 billion dollars. As a result of Janssen’s conduct, the City’s self-insured prescription drug plan paid inflated prices for Zytiga from the time Janssen’s original patent had expired in December 2016 to the present. The City’s plan pays for prescription drugs for its approximately 5,000 employees, 25,000 retirees and their families, and includes purchases in almost every state in the United States.

As Janssen’s 20 year patent on the key component of Zytiga approached its expiration, Janssen attempted to revive a prior patent application in order to prevent generics from coming on the market. The United States Patent & Trademark Office (“PTO”) denied that patent application on five separate
occasions. The PTO concluded that Janssen’s proposal to mix the key Zytiga component--abiraterone acetate-- with a steroid, is an obvious use and not a patentable invention. Undeterred, Janssen then applied for a patent for this same drug combination, asserting that its “commercial success” was proof
that it was not an obvious drug combination. However, Janssen neglected to mention that its existing patent gave it an effective monopoly on abiraterone acetate, and Zytiga’s lack of competition is what accounted for its commercial success, not its novelty. Janssen then pursued patent enforcement litigation against the generics that sought to enter the market, despite knowing this litigation was baseless. Indeed, as affirmed earlier this week by the United States Court of Appeals for the Federal Circuit, that litigation has failed at every level.

Baltimore City Solicitor Andre M. Davis, states, “When big pharma engages in anticompetitive tactics to maintain its profits and thus harms the City, we will enforce the law to both recover damages and deter future fraudulent conduct. The City needs every dollar for essential services.”

The City Law Department is co-counsel with Sharon Robertson of Cohen Milstein.