Alexion, AstraZeneca’s Rare Disease group, has entered into a settlement agreement with Chugai Pharmaceutical Co., Ltd. (Chugai), resolving all patent disputes between the two companies related to Ultomiris (ravulizumab).
In accordance with the settlement agreement, Alexion and Chugai have taken steps to withdraw patent infringement proceedings filed with US District Court for the District of Delaware and Tokyo District Court, AstraZeneca said in its press release.
Marc Dunoyer, Chief Executive Officer, Alexion, said: “With this settlement, we will continue to advance our Ultomiris development programmes in new indications and focus on our mission to transform the lives of people affected by rare diseases.”
Under the terms of the agreement, Alexion will make a single payment of $775m in the second quarter of 2022, for which a charge will be recognised through the non-core P&L in the first quarter of 2022. No further amounts are payable by either party. The settlement does not impact AstraZeneca’s financial guidance for 2022, the company said.
AstraZeneca reminded in its press release that In November 2018, Chugai filed a lawsuit against Alexion in the Delaware District Court alleging that Ultomiris infringes US patent No. 9,890,377 held by Chugai. Upon issuance of US patent No. 10,472,623 in November 2019, Chugai filed a second lawsuit in the same court alleging that Ultomiris also infringes that patent. The two lawsuits were consolidated in December 2019.
In December 2018, Chugai filed a lawsuit in the Tokyo District Court against Alexion Pharma GK alleging that Ultomiris infringed two Japanese patents (Japanese Patent No. 4954326 and No. 641743) held by Chugai. Chugai’s complaint sought unspecified damages and certain injunctive relief. Also beginning in 2016, Alexion had challenged the validity of four of Chugai’s Japanese patents. The IP High Court in Japan had found these patents invalid. Chugai filed a correction of these patents with the Japanese Patent Office. The Japanese Patent Office found the corrected patents invalid, and Chugai appealed the Patent Office’s decision to the IP High Court in Japan.
Beginning in 2016, Alexion challenged the validity of five of Chugai’s European patents. One patent was maintained by the Opposition Division of the European Patent Office while four were revoked. Three of the five decisions by the Opposition Division have been appealed to the Boards of Appeal for the European Patent Office.