Pfizer not Impotent in Face of Alleged Infringement on Viagra Patent

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/By Itzhak Dannon /

The American company Pfizer, the world’s largest pharmaceutical company, recently filed a civil suit in Tel Aviv District Court, seeking  monetary relief to the tune of NIS10 million (over $2, 700, 000) as well as extensive equitable relief in the forms of a permanent injunction, a writ of mandamus and accounting, against the pharmaceutical company Unipharm of Tel Aviv and Trima Israel Pharmaceutical Products  of Ma’abarot.

The lawsuit claims that Pfizer developed and refined the active ingredient of Viagra, sildenafil.  It further claims that earlier this year defendant Unipharm turned to Pfizer and proposed that in return for a financial settlement it would avoid launching a preparation containing sildenafil, to be used to treat erectile dysfunction. The complaint alleges that Pfizer rejected the attempt at extortion and would not even consider such a “business proposal.”  Pfizer avers that it made it clear to Unipharm that any launch of such a product, before its patent expires, will immediately result in legal action it would take against the intended infringer.

According to Pfizer, the defendants could not resist the temptation to make “a quick buck” before the expiration of the patent protecting Viagra and launched a preparation containing sildenafil for treatment of impotency, marketed by them under the name Tarim.

According to Pfizer, the defendants “hitched a ride” on its huge investments in the development and marketing of Viagra.  Pfizer believes that defendants’ avarice had manifested in copying its technology, which is evidenced by their attempt to pick off the fruits of Pfizer’s great efforts without investing anything and without having taken any risk and, coupled with defendants’ conduct of intentionally seeking to harm Pfizer, it constitutes the inequitable conduct of unjust enrichment.

In its pleading Pfizer anticipated that, till the expiration of its patent in June, 2014, marketing the violative product Tarim would inflict on it great and extensive damages, including loss of sales, due to the disruption of its business plans to prepare for the lawful launch of generic drugs after expiration of its patent, and as a result of the disruption of Viagra’s pricing scheme.

Pfizer argues that the damages it would incur by the defendants’ conduct  may result in a substantial loss of sales even after the expiration of its patent and thus the defendants would negatively affect its income from  one of Pfizer’s most important drug on the Israeli market, thus standing to risk its investments in the Israeli market.  Plaintiff avers that further unspecified damages will be caused by defendants’ allegedly unlawful actions.

In addition, it is clear, according to the suit, that defendants launched the product before the expiration of the patent in order to secure a marketing advantage over those competitors who intend to respect the legal protection accorded by patent law and await the expiration of the patent prior to entry into the market with legitimate generic drugs.

At this stage and solely for considerations of limiting the filing fees (which, in Israel are tied to the extent of compensation sought in the complaint), Pfizer alleged damages due to defendants’ conduct are limited to NIS10 million while reserving the right to amend the complaint so as to reflect the actual amount in the future.  In addition, the Court is asked to prohibit defendants from violating Pfizer’s patent regarding Viagra, to immediately withdraw all infringing preparations currently marketed by them and have them destroyed and compel them to provide plaintiff with a detailed report on the extent of the acts of infringement and the resulting profits therefrom.