Allergan, Inc. v. Apotex, Inc.

Allergan, Inc. (defendant) had two patents for the same compound, one for eye drops to treat glaucoma and one for a topical treatment for eyelash hair loss. Allergan had approval to sell drugs based on both patents. Apotex, Inc. and six others (plaintiffs) sought approval for a generic version of Allergan’s hair-loss drug. Allergan sued, claiming that Apotex’s drug infringed its patent despite a distinction that the drug only promoted hair growth. Hair-loss treatment is specifically defined as “arresting hair loss or reversing hair loss, or both, and promoting hair growth.” The district court construed the term to mean any of the three, in the alternative. The patent’s disclosure referenced hair growth observed while researching the glaucoma drug and included eye-drop administration as an enabling example. Allergan’s patent for the glaucoma drops did not teach topical application or hair-loss treatment. Clinical trials for the drops showed only a fraction of patients experienced hair growth, and testimony provided that a properly applied drop would not transfer to the skin. The district court held that Allergan’s patent was not inherently anticipated by its other patent because the latter only teaches that eye drops may contact the skin. Accordingly, it concluded the patent was not invalid and infringed by Apotex. Apotex was enjoined from further infringement and appealed.